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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vitalife, Inc. dba Tabak's Health Products v. Texas International Property Associates
Case No. D2007-0507
1. The Parties
The Complainant is Vitalife, Inc. dba Tabak’s Health Products, Irvine, California, United States of America, represented by Vogt & Resnick, LLP, United States of America.
Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by Gary Wayne Tucker, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <tabaksheathproducts.com>, registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2007. On April 4, 2007, the Center transmitted by email to Compana LLC, a request for registrar verification in connection with the disputed domain name. When there was no response, the Center sent reminder requests on April 18, 2007 and again on April 20, 2007. Compana LLC finally provided its registrar verification to the Center on April 20, 2007.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with Paragraphs (2) (a) and 4(a) of the Rules, the Center notified the Respondent of the Complaint, and the proceeding commenced on April 23, 2007. In accordance with Paragraph 5(a) of the Rules, the due date for Response was May 13, 2007. The Response was received by the Center on May 14, 2007. On May 15, 2007, the Complainant objected to the late response by Respondent. On May 18, 2007, the Center determined that Respondent’s submission was timely filed.
The Center appointed John E. Kidd as the panelist in this matter on June 15, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Paragraph 7 of the Rules.
3A. Supplemental Proceedings
On May 22, 2007, Complainant filed an unsolicited Reply to Respondent’s Response. Since the Policy and the Rules do not allow for a reply, the Panel has declined to accept the Reply and it was not considered by the Panel. Upon review of the case, under Paragraph 12 of the Rules, the Panel issued Administrative Panel Procedural Order No. 1 on June 29, 2007 in which it ordered the parties to submit additional information to be filed within a specific time frame limited to specific issues. As requested, Complainant filed a reply and Respondent filed a sur-reply with the Center. Both supplemental submissions by the parties have been considered by the Panel.
4. Factual Background
Complainant’s business of developing, marketing and selling healthcare products under the mark TABAKS HEALTH PRODUCTS throughout the United States of America and worldwide commenced 14 years ago on approximately January 1, 1993.
Since 1993, Complainant has spent at least a substantial sum on advertising and promoting its healthcare products in the United States of America. The revenues for the business using the mark for the period 1998-2006 was
likewise substantial and the business served a significant number of customers. Complainant also has a presence on the Internet, at “www.tabaks.com” since November 27, 1996 for promoting and advertising its healthcare products as shown in a Whois database search.
Complainant became aware of the disputed domain name in October 2006, at which time it believed that the registrant was Manila Industries, Inc.
The identity of the initial registrant of the disputed domain name is unclear. Respondent first states that it acquired the disputed domain name in an asset acquisition from Manila Industries, Inc. Respondent then states that it created the disputed domain name on November 2, 2005. Respondent’s current counsel has also served as counsel for Manila Industries, Inc. as shown for several prior UDRP decisions.
Respondent concedes that Manila Industries, Inc. has a long history of unfavorable UDRP decisions.
5. Parties Contentions
Complainant contends, inter alia, the following: the disputed domain name <tobakshealthproducts.com> is identical or confusingly similar to Complainant’s mark TABAKS HEALTH PRODUCTS used in interstate commerce since January 1, 1993. The goods and services adopted and used under Complainant’s mark include the formulation, manufacture, sales and distribution of health products.
Complainant was the first to utilize its mark exclusively and continuously in interstate commerce for the provision of these goods and services.
Complainant’s mark is protected by common law trademark rights in its mark. The mark is not generic nor descriptive and the mark has acquired secondary meaning as distinctive of Complainant’s goods and services.
The website using the disputed domain name contains links to other websites related to goods and services offered under Complainant’s mark that directly compete with Complainant. Complainant contends that due to the similarity of Complainant’s mark and the disputed domain name, customers and potential customers could type in Complainant’s mark and arrive at the disputed domain name and may reasonably but erroneously believe they have reached Complainant’s true website (“www.tabaks.com”). Respondent’s use of the disputed domain name is likely to create confusion with Complainant’s mark as to the source, sponsorship and services of Respondent’s websites.
Complainant contends that Respondent has no rights or legitimate interest in the disputed domain name since Complainant has not licensed or otherwise consented to Respondent’s use of Complainant’s mark TABAKS HEALTH PRODUCTS.
Complainant contends that Respondent is not commonly known by the disputed domain name nor is Respondent using the disputed domain name in connection with the bona fide offering of goods or services rather, Respondent is using the disputed domain name to advertise a wide range of products and services not originating from Complainant. Such use baits or acts as a portal site for Internet users, to websites operated by Complainant’s competition.
Complainant contends that the relationship between Respondent and Manila Industries, Inc. is a smokescreen, intentionally and willfully designed to create the illusion that Respondent has legitimate interests in the disputed domain name.
Complainant further contends that this type of activity is registering and using the disputed domain name in bad faith—pursuant to Paragraphs 4(a)(iii) and 4(b) of the Policy and Paragraph 3(b)(ix)(3) of the Rules.
Respondent contends, inter alia, the following: Complainant has no registered trademark and has failed to show that a common law right to the mark it is claiming existed at the time of the registration in 2005, of the disputed domain name. Respondent contends that it believes the disputed domain name is composed of generic descriptive terms to which no party had a right at the time of registration and this is evidence of Respondent’s good faith.
Respondent contends that the amount spent by Complainant on advertising and promoting its mark has been less than successful, since a 2007 Google search only returned 212,000 hits for the word “Tabaks”.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to Complaint’s mark.
The Panel finds that Complainant provided sufficient credible evidence to establish it has rights in the TABAKS HEALTH PRODUCTS mark. Although its mark is not registered, by reason of Complainant’s long and continuous use of its mark, over a 14 year period, spending a substantial sum on advertising and promoting the products sold under the mark to both national and international customers, the Panel finds that Complainant has proven common law rights in its mark and has established secondary meaning sufficient to establish rights under paragraph 4(a)(i) of the Policy.
The disputed domain name is virtually identical to Complainant’s mark, in its entirety except for adding the gTLD “.com”, which may be disregarded for present purposes. Respondent also deleted the apostrophe in the word “Tabak’s” and deleted the spaces between words of the mark, which are of little significance here.
The Panel finds that both of these changes fail to distinguish the disputed domain name from Complainant’s mark. To add the gTLD “.com” to any identical or substantially similar mark is inconsequential. The removal of spaces between words of the mark does not in any way distinguish the mark and the disputed domain name. See Polellato S.P.A. v. Tonetti,
WIPO Case No. D2000-0493.
The Panel also finds that the disputed domain name is similar in sound, appearance and connotation to Complainant’s mark and given that the mark has achieved secondary meaning, it is unnecessary to determine whether, and to what extent, the mark is composed of generic terms as argued by Respondent.
For the above stated reasons, the Panel finds Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the evidence establishes that Respondent is using the disputed name as a portal site causing Internet users to be directed to other linked websites that compete with Complainant.
The Panel finds that such use does not, in this case, establish rights of legitimate interest in the disputed domain name. See Grunelfos A/S v. Manila Industries, Inc.
WIPO Case No. D2006-1295.
The Complainant’s mark TABAKS HEALTH PRODUCTS and website “tabaks.com”, were both prior in time and use to the registration of the disputed domain name <tabakshealthproducts.com>.
The evidence clearly establishes that Respondent has not been known by the disputed domain name and does not sell, offer for sale or otherwise market healthcare products but rather is in the business of registering domain names and providing locator services. The Panel finds, as prior UDRP panels have recognized, that this is further evidence that Respondent has no rights or legitimate interest, in the disputed domain name. See Germini v. Manila Industries, Inc.,
WIPO Case No. D2006-0027 and Sure Payroll, Inc. v. Texas International Property Associates,
WIPO Case No. D2007-0464.
Complainant has made out an initial prima facie case in its Complaint and supplemental brief that Respondent lacks any right or interest in the disputed domain name and has not provided bona fide offering of goods and services for the disputed domain name. The burden of proof shifts and Respondent carries the burden of demonstrating rights or legitimate interest on the disputed domain name.
The Panel finds that both Respondent’s response and supplemental sur-reply fail to do so and that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and Complainant’s mark. This constitutes bad faith under paragraph 4(b)(iv) of the Policy.
Complainant asserts that Respondent is currently using the disputed domain name to divert Internet traffic to a website that offers a search engine and links to other websites featuring goods and services that are in direct competition with Complainant. The Respondent has not denied this allegation or come forward with sufficient evidence to refute Complainant’s claims of registration and use in bad faith. As such, The Panel finds Respondent’s registration and use of the disputed domain name has been in bad faith.
Respondent and its predecessor Manila Industries, Inc. have a history of unfavorable UDRP decisions and the Panel finds that this is a case where Respondent has selected a domain name that it should have known, actually or constructively, it was not entitled to use.
The Panel finds that Respondent and its predecessor Manila Industries, Inc. have demonstrated a pattern of registering domain names that infringe on another’s legitimate trademark rights. Such evidence can be considered in determining whether Respondent’s action constitute bad faith. See Australian Stock Exch. v. Cmty. Internet (Australian) PTY, LTD.,
WIPO Case No. D2000-1384.
In light of these circumstances, the Panel finds Respondent has registered and used the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
For all the foregoing reason, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tabakshealthproducts.com> be transferred to Complainant.
John E. Kidd
Dated: August 8, 2007