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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nutraquest, Inc. f/k/a Cytodyne Technologies, Inc. v. Xenadrine RFA 1 Superstore (a.k.a. Xenadrine Superstore)

Case No. D2008-0495

1. The Parties

The Complainant is Nutraquest, Inc. f/k/a Cytodyne Technologies, Inc., Manasquan, New Jersey, United States of America, represented by Gibbons PC, United States of America.

The Respondent is Xenadrine RFA 1 Superstore (a.k.a. Xenadrine Superstore), Pompano, Florida, United States of America.

2. The Domain Names and Registrar

The disputed domain names <xenadrine-efx-rfa.com> and <xenadrinerfa1.com> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2008. On April 2, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On April 2, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2008.

The Center appointed Angela Fox as the sole panelist in this matter on May 13, 2008. 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 the Rules, paragraph 7.

4. Factual Background

The Complainant manufactures and sells sports nutrition products and dietary supplements. In 1997, it launched a weight loss supplement under the brand name XENADRINE RFA-1. The Complainant has sold the Xenadrine RFA-1 product continuously in the United States of America and abroad for over 10 years. In February 2002, the Complainant launched a further weight loss supplement under the brand name XENADRINE EFX, which it has also sold throughout the United States of America and abroad.

The Complainant filed print-outs from the USPTO database showing that it owns the following United States federal trademark registrations for XENADRINE and XENADRINE EFX for dietary weight loss supplements:

- No. 2329696, XENADRINE, filed on May 17, 1999 (first use, November 1, 1997)

- No. 3292639 XENADRINE & Design, filed on June 27, 2006 (first use, November 1997)

- No. 3296089 XENADRINE EFX & Design, filed on June 27, 2006 (first use February 2002)

- No. 3391199 XENADRINE EFX, filed on May 24, 2007 (first use, February 1, 2002)

The Respondent registered the disputed domain names on November 5, 2003. It uses <xenadrine-efx-rfa.com> to link to a site with a top banner reading, “Welcome to Xenadrine-EFX-RFA.com See and Feel Results Within the First Week with Xenadrine EFX: The Leader in Advanced Thermogenics.” The text that follows claims that the site “will teach you all about the revolutionary diet supplement…Xenadrine EXF, Cytodyne’s new patent-pending formula.” Side links connect to pages with topics headed “Xenadrine EFX,” “Xenadrine RFA-1,” “EFX or RFA-1,” “EFX Supplement Facts,” “RFA-1 Supplement Facts,” “Xenadrine Side Effects,” “Xenadrine Testimonials,” “www.Before and After Photos,” “What Experts Are Saying” and “Cytodyne Technologies.”

At the bottom of the home page is a paragraph reading, “© 2003 Xenadrine-Efx-Rfx.com. Xenadrine EFX, Xenadrine RFA-1, Xenadrine and all related logos & insignia are TM & ?2003 [sic] Cytodyne. Use as directed with a sensible nutrition and exercise program. Results shown may not be typical.” Similar additional disclaimers follow.

The <.xenadrinerfa1.com> domain name links to a holding page operated by the registrar, GoDaddy.com, Inc., advertising that company’s web hosting and related services.

The Complainant’s attorneys wrote to the Respondent on January 9 and 18, 2008, demanding the transfer of the disputed domain names. They received no response to either communication.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to its registered XENADRINE and XENADRINE EFX trademarks and to XENADRINE RFA-1, in which it claims to have acquired common law rights through substantial use over 10 years in the United States of America and abroad, including extensive advertising and promotion. The Complainant argues that XENADRINE and the composite trademarks XENADRINE RFA-1 and XENADRINE EFX have become famous and are recognized and relied upon by consumers to identify the Complainant’s products.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has not licensed the Respondent to use its trademarks. The Respondent registered the domain names six years after the Complainant began marketing the Xenadrine RFA-1 product and well over a year after the Xenadrine EFX product was launched, and the Complainant contends that the Respondent had actual and constructive notice of the Complainant’s rights. Moreover, the Complainant contends that the Respondent is using <xenadrine-efx-rfa.com> to impersonate the Complainant while offering for sale competitors’ goods. The Complainant alleges that at least one customer who sought to purchase the Xenadrine RFA-1 product via the <xenadrine-efx-rfa.com> website was directed to contact the Respondent by telephone. The Complainant says that during that call, the Respondent advised that it did not sell the Xenadrine RFA-1 product and attempted to persuade the caller instead to buy a product that it did sell, Thermodyne, which the Respondent described as “an exact Xenadrine RFA-1 copy.”

Finally, the Complainant contends that the Respondent registered and is using the disputed domain names in bad faith, with full knowledge of and intent to profit from the Complainant’s rights in the XENADRINE, XENADRINE EFX and XENADRINE RFA-1 marks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

Under paragraph 4 (a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Complainant has proved that it owns federally registered trademark rights in XENADRINE and XENADRINE EFX.

The Complainant also claims to own common law rights in XENADRINE RFA-1. In order to make out that claim, the Complainant must establish that XENADRINE RFA-1 has come to denote the Complainant’s goods as a distinctive identifier (see inter alia Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784 and Uitgeverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575). Length and scale of use, extent of advertising and consumer recognition are all relevant factors in assessing whether a mark has acquired such secondary meaning. In this case, the Complainant has made over 10 years of continuous and substantial use of the composite mark XENADRINE RFA-1 in the United States of America and abroad, including extensive advertising and promotion. The Respondent has not sought to rebut the Complainant’s assertions, and it is evident from the content of the Respondent’s “www.xenadrine-efx-rfa.com” website that the Respondent itself is well aware of the Complainant’s use of Xenadrine RFA-1 in respect of a weight loss supplement.

These factors tend to support the Complainant’s claim to secondary meaning in the XENADRINE RFA-1 mark (and indeed, common law rights have already been found in that mark by another panelist in Nutraquest, Inc. f/k/a Cytodyne Technologies, Inc. v. Antigua Domains, WIPO Case No. D2008-0163). In these circumstances, the Panel is prepared to accept that the Complainant has common law rights in XENADRINE RFA-1.

The disputed domain name <xenadrinerfa1.com> is identical to the Complainant’s common law trademark XENADRINE RFA-1, apart from the omission of the non-distinctive hyphen and the addition of the non-distinctive domain name suffix, “.com.” These minor differences are unlikely to attract the attention of Internet users and are not sufficient to avoid confusing similarity with the Complainant’s XENADRINE RFA-1 trademark.

The second disputed domain name, <xenadrine-efx-rfa.com>, incorporates the Complainant’s XENADRINE and XENADRINE EFX marks and a substantial part of the XENADINE RFA-1 mark, adding non-distinctive hyphens and omitting only the non-distinctive suffix, “-1”. These minor differences do not avoid the confusing similarity created by the Respondent’s nearly wholesale adoption of the Complainant’s various XENADRINE word marks.

The Panel is satisfied that the disputed domain names are confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has not authorized the Respondent to use the disputed domain names, nor has the Respondent made any effort to prove a right or legitimate interest in them.

The Panel may nonetheless find such a right or interest if there is evidence that the Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue (under paragraph 4 (c) (iii) of the Policy), or if there is evidence that, before notice of the dispute, the Respondent was using or making demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services (under paragraph 4 (c) (i) of the Policy).

In this case, the Respondent is not using <xenadrinerfa1.com> at all. Rather, the domain name links to a holding page posted by the Respondent’s registrar, GoDaddy.com, Inc., advertising the latter’s web hosting and related services. Neither paragraph 4 (c) (i) or (iii) of the Policy therefore applies.

Even if the Respondent were to be profiting from Internet users who click through from the <xenadrinerfa1.com> website to that of GoDaddy.com, Inc., the use of a domain name that is confusingly similar to the Complainant’s distinctive trademark to lure Internet users to a site advertising third-party services would not confer a right or legitimate interest in the disputed domain name (see inter alia Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353).

The Respondent has used <xenadrine-efx-rfa.com> more extensively, in connection with a website describing and ostensibly promoting the use of the Complainant’s Xenadrine line of products. The content, trademark notices and disclaimers read very much as one would expect them to read on a website published by the manufacturer of the Xenadrine range. It is not a general information site, but rather one designed to persuade visitors of the effectiveness of the Xenadrine products with a view to encouraging purchase. As such, it is not surprising that visitors to the site might assume that it was the website of, or in some way related to, the Complainant, and that they should enquire through the website for the purchase of Xenadrine products. The print-outs attached to the Complaint do not show whether the Xenadrine products or any others were available for purchase through the Respondent’s website. However, the Complainant has asserted, and the Respondent has not denied, that a visitor to the website contacted the Respondent enquiring how to buy the Xenadrine products, and that the Respondent offered to supply a competing product instead.

Given these facts, it is clear that the Respondent’s use of <xenadrine-efx-rfa.com> misleadingly diverts customers seeking the Complainant’s Xenadrine products, with intent for the Respondent’s commercial gain as a supplier of competing supplements. The Respondent is therefore not making a legitimate noncommercial or fair use of the disputed domain name under paragraph 4 (c)(iii) of the Policy.

The Respondent’s offer to supply visitors to the site with competing goods is, moreover, not a bona fide offering of goods within the meaning of paragraph 4 (c)(i) of the Policy. In using a domain name that is confusingly similar to the Complainant’s distinctive trademarks to attract Internet users who are then offered competing third-party products, the Respondent has deliberately sought to mislead and to profit from the confusion of Internet users, who would legitimately expect a website linked to the disputed domain name to be that of, or related to or endorsed by, the Complainant. Such conduct cannot be regarded as evincing good faith.

Other panelists have taken a similar approach where respondents have engaged in such “bait and switch” selling methods (see e.g., F. Hoffmann-La Roche AG v. Web Marketing Limited., WIPO Case No. D2006-0005, Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946, and F. Hoffmann-La Roche AG v. Andrey Radashkevich / Domain Admin, PrivacyProtect.org, WIPO Case No. D2008-0149).

The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Under paragraph 4 (a)(iii) of the Policy, the Complainant must prove that the disputed domain names were registered and are being used in bad faith. Paragraph 4 (b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include inter alia paragraph 4 (b)(iii) and (iv):

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Respondent has clearly used <xenadrine-efx-rfa.com> in an intentional attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The content of the site is written and presented in a style and manner that is likely to cause visitors wrongly to assume that the website is that of, or is somehow related to or endorsed by, the Complainant. The Respondent seeks to gain commercially from the success of this lure by offering to supply competing products to visitors who enquire about buying Xenadrine supplements.

Similar conduct has supported findings of bad faith registration and use under paragraph 4 (b) (iv) in other cases, including Pfizer Inc. v. Juan Gonzales, WIPO Case No. D2004-0589 and F. Hoffmann-La Roche AG v. Web Marketing Limited, WIPO Case No. D2006-0005. The Panel considers that the Complainant has made out its case for bad faith registration and use under paragraph 4 (b)(iv) of the Policy in respect of <xenadrine-efx-rfa.com>.

The Respondent appears merely to have “parked” the other disputed domain name, <xenadrinerfa1.com>, with its registrar, GoDaddy.com, Inc., and the domain name links only to a page advertising the registrar’s web-related services. However, given the bad faith evinced by the Respondent’s registration and use of <xenadrine-efx-rfa.com>, the Panel is prepared to infer that the Respondent registered this further domain name in bad faith, as well.

Despite the absence of active use of this disputed domain name by the Respondent, the circumstances of this case support a finding that the Respondent’s conduct amounts to use in bad faith following the principles enunciated in Telstra Corporation Limited v. Nuclear Marshmallows ( WIPO Case No. D2000-0003) and subsequent cases on passive holding (see Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483). The Complainant’s XENADRINE RFA-1 trademark is inherently distinctive and enjoys a reputation in the weight loss supplement field in the United States. The Respondent clearly knew of it when it registered the disputed domain name, taking account of its simultaneous registration of <xenadrine-efx-rfa.com> and its calculated use of that domain name to mislead Internet users and trade off the Complainant’s goodwill. On the totality of the circumstances, it is difficult to conceive of any good faith use to which the Respondent could put the <xenadrinerfa1.com> domain name. In the Panel’s view, it is reasonable to infer that the Respondent registered and held this domain name in bad faith, and that such holding should be regarded as use in bad faith.

The Respondent’s conduct also manifests bad faith registration and use of <xenadrinerfa1.com> under paragraph 4 (b)(iii) of the Policy. The manner in which the Respondent has used the <xenadrine-efx-rfa.com> domain name permits the inference that it registered <xenadrinerfa1.com>, which is identical to the Complainant’s XENADRINE RFA-1 trademark, for the purpose of diverting Internet users seeking information on the Complainant’s product and therefore with the intent to disrupt the business of the Complainant, a competitor in the weight loss supplement business.

The fact that the domain name diverts Internet users to a website advertising unrelated third-party services rather than competing products does not render the Respondent’s conduct any less disruptive to the Complainant’s business, since such use is calculated to frustrate Internet users legitimately seeking the Complainant’s website.

The Panel is satisfied that the Respondent registered and has used the disputed domain names in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <xenadrine-efx-rfa.com> and <xenadrinerfa1.com> be transferred to the Complainant.

Angela Fox
Sole Panelist

Dated: May 27, 2008