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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

New England Greens, LLC v. Stephen Emond

Case No. D2009-0362

1. The Parties

The Complainant is New England Greens, LLC of Canaan, Connecticut, United States of America represented by Simpson & Simpson PLLC, United States.

The Respondent is Stephen Emond of Brossard, Quebec, Canada

2. The Domain Name and Registrar

The disputed domain name, <vibranthealth.com> (the "Domain Name"), is registered with Primus Telecommunications t/a PlanetDomain & PrimusDomain (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 18, 2009. On March 19, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 20, 2009, the Registrar 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" or "UDRP"), 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 March 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2009, but at the request of the Respondent and with the agreement of the Complainant the due date for Response was extended to April 30, 2009. The Response was filed with the Center on April 30, 2009.

The Center appointed Tony Willoughby as the sole panelist in this matter on May 12, 2009. 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 is a company incorporated in Connecticut, United States. It is engaged in the design and marketing of food supplements under the brand name VIBRANT HEALTH.

The Respondent is the Chief Executive Officer of Vibrant Health International Technologies Inc. a company incorporated in Canada and engaged in the provision of "medical devices, software, nutriceutical, cosmetic and homeopathic products and education and training" to healthcare professionals. For the purposes of this administrative proceeding the Panel proposes to treat the Respondent and his company as one.

On July 31, 1997 the Betty Erickson and William Watts filed application at the United States Patent and Trade Mark Office for registration of the word trade mark VIBRANT HEALTH in class 5 for dietary food supplements, claiming first use of the mark in commerce on June 30, 1995.

On a date in 1998 the Respondent was issued with an American Express card featuring the name "VIBRANT HEALTH" under his name.

On March 20, 1999 the Complainant registered the domain name, <vibranthealth.org>.

On April 4, 2000 the Domain Name was registered.

On February 5, 2002, the Erickson and Watts trade mark application matured into United States Trade Mark Registration No. 2,535,149.

On August 30, 2002 the Respondent`s company was incorporated in Canada.

On December 30, 2002 the Respondent`s company filed application at the Canadian Intellectual Property Office for registration of a "V" design as a trade mark for a wide variety of medical and bio-energetic devices

By March 28, 2003 (according to the evidence of the Complainant) the Respondent`s company had an active website up and running and connected to the Domain Name.

On January 31, 2005 United States Trade Mark Registration No. 2,535,149 was assigned to the Complainant.

On March 29, 2006 the Respondent`s company`s trade mark application matured into Canadian Trade Mark Registration No. LMC661665.

On December 15, 2008 the Complainant`s representatives sent a cease and desist letter to the Respondent seeking transfer of the Domain Name, to which they received no reply.

5. Parties` Contentions

A. Complainant

The Complainant contends that the Domain Name (absent the generic domain suffix) is identical to its VIBRANT HEALTH registered trade mark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, claiming that the Respondent`s website is no longer active. The Complainant is concerned that customers visiting the Respondent`s site by mistake and seeing the "This Website is temporarily unavailable" notice will conclude that the Complainant is no longer in business.

The Complainant contends that the Domain Name, which was registered well after the date the Complainant first started using the VIBRANT HEALTH trade mark (1995) and well after the filing date of the Complainant`s trade mark application, was registered and is being used in bad faith. The details of the Complainant`s allegations in this regard are dealt with below.

B. Respondent

The Complainant claims to have been using the name "Vibrant Health" since the late 1980s. He states that the business started off as an Ontario company trading under the name Vibrant Health Wholistic Centre. He then acquired another company, Ontario Limited, and his business traded as the Vibrant Health division of that company until he registered his current company.

The essence of the Response is that the Respondent has been trading for many years under the Vibrant Health name in an area of business which does not cross with the Complainant`s business in that the products are different and the people to whom the parties supply their products are different. The Respondent states that he built up his business in Canada with no knowledge of the Complainant or its business. He had no need to conduct United States trade mark searches because at that time his business was restricted to Canada.

The Respondent acknowledges that he receives about 10 emails a year intended for the Complainant, but he has no interest in taking advantage of the Complainant and just passes them on.

The Respondent denies that he no longer has any interest in the Domain Name. He has had difficulties with his website, which crashed for some reason and he is working with consultants to get it back up and running. He has also been out of action for a period, having donated a kidney to a person close to him.

6. Discussion and Findings

A General

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

B. Identical or Confusingly Similar

The Respondent does not deny that the Domain Name (absent the domain suffix) is identical to the Complainant`s trade mark and the Panel so finds.

C. Rights or Legitimate Interests

The Complaint under this head focuses on just one aspect of the case, namely the Complainant`s belief that the Respondent`s use of the Domain Name has ceased:

"Respondent`s <vibranthealth.com> website is not active; thus it is clear that Respondent is not using the Domain Name in connection with the bona fide offering of goods and services."

The Respondent`s response is that he has had and continues to have a bona fide business operating under and by reference to the "Vibrant Health" name and that the only reason the website is non-operational is not because he has abandoned it, but because it has crashed and he is in the process of rectifying the position.

The Complainant`s case on this point is not particularly strong, but the Respondent has done himself no favours at all by failing to provide any supporting evidence for his position. There is nothing before the Panel to show how the Respondent`s business is operating; nor is there any evidence before the Panel to demonstrate that were it not for the website crash, the website would still be up and running. The Panel would have expected to have seen something (e.g. a communication with the Respondent`s IT consultants) evidencing what is at present a bare assertion.

However, in light of the Panel`s finding under the next head, it is not necessary for the Panel to make a finding on this topic.

D. Registered and Used in Bad Faith

For a complaint under the Policy to succeed, the Complainant must prove that when the Respondent registered the Domain Name, the Respondent made the registration with the Complainant and/or its trade marks in mind. There must have been a bad faith motive of some kind in registering the Domain Name.

The Complainant concedes that the Respondent had an active trading website up and running in 2003 and there is nothing in the Complaint to suggest that at that time the Respondent was targeting the Complainant in any way.

The Panel has visited the pages of the Respondent`s website accessible by way of the WaybackMachine to which the Complainant has drawn attention in Annex 8 to the Complaint. The Complainant relies upon it to establish that while the Domain Name was registered in 2000, an active website did not commence until March 2003. However, if the evidence of the WaybackMachine is good evidence for that proposition, it is also good evidence for the proposition that (a) at any rate from March 2003 to January 2008 (the pages identified on Annex 8 to the Complaint) the Respondent had an active trading website for a business of the kind described in the second paragraph of Section 4 above and (b) the business was conducted under and by reference to the "Vibrant Health" name. Moreover, the Respondent`s "V" design trade mark, which he applied for in December 2002 and which matured into a registration in 2006, was in prominent use as part of a logo featuring the "Vibrant Health" name.

To succeed, the Complainant needs to satisfy the Panel that the online business evident from those web pages dating from 2003 to 2008 was built on an original plan by the Respondent to take a free ride on the back of the Complainant`s trade mark rights by using the Domain Name for the purpose.

The Respondent denies all knowledge of the Complainant at the time when he commenced business under the "Vibrant Health" name. It is unfortunate that the Respondent`s claims are virtually all bare assertions unsupported by any evidence and it is an irony that the best evidence as to the nature and style of the Respondent`s business came from the Complainant`s reference to the WaybackMachine. However, the obligation is upon the Complainant to make good the case, not for the Respondent to prove the defence. It is noteworthy, too, that the Complaint features very little of any substance about the Complainant`s business save for unsupported assertions.

There is nothing about the Respondent`s website (when it was up and running from 2003 to 2008) to indicate that the Respondent was trading on the back of the Complainant`s rights. From what the Panel has been able to determine from the limited material before him, the businesses appear to be different (medical devices directed to healthcare professionals on the one hand and dietary food supplements directed mainly to consumers on the other). The Panel is not surprised that the parties have not crossed paths to any material degree. It is also not surprising to the Panel that given the identity of names there has been a modicum of misaddressed mail. The Respondent acknowledges receiving about 10 misaddressed emails per year, which he passes on to the Complainant.

The Panel has nothing before him to support a finding that the Respondent`s denial of all knowledge of the Complainant at the relevant time is false; nor is the Panel persuaded that the Respondent should be deemed to have known of the Complainant`s rights. The Complainant`s best argument on the issue of the Respondent`s knowledge is the claim that the parties are geographically proximate, but that of itself is not enough. There is a national boundary in between, the businesses are not in the same field and the name in question has descriptive connotations likely to be attractive as a name or slogan to anyone engaged in the healthcare/health foods area. It is not the sort of name sufficient to engender the suspicion that the second in time to adopt it, must have had the first user in mind.

In deference to the Complainant, the Panel now addresses the previous WIPO decisions in support of the Complainant`s claim that the Domain Name was registered and is being used in bad faith:

- Mastercard International Inc. v. North Tustin Dental Associates, WIPO Case No. D2007-1412. The Complainant cites this case in support of 3 propositions, namely that the Respondent had actual or constructive knowledge of the Complainant when he registered the Domain Name; that prior knowledge is evidence of bad faith; and that the fact that the Respondent is not making active use of the Domain Name is evidence of bad faith. This case is very different from the current one. The respondent did not reply, the complainant`s mark was a famous, distinctive mark and none of the domain names in issue were in use or had ever been in use;

- Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. The Complainant cites this case in support of the first of those propositions, but, again, it was a very different case, for precisely the same reasons as the Mastercard case. The bad faith was so obvious that actual knowledge was inferred;

- Marconi Data Systems v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090. The respondent did not respond. Both parties were United States companies and the panelist felt it appropriate to apply a United States legal doctrine of constructive knowledge arising from the existence of a United States trade mark registration. The respondent offered the domain name to the complainant for sale and there was no evidence of any use of the domain name. Again, a very different case. This case is also cited in support of the proposition that the failure to respond to a cease and desist letter may be evidence of bad faith. A fair reading of the passage in question lists this point as one of a combination of points, the last of which is the failure of the respondent to respond to the complaint. Here the Respondent did in fact respond;

- Akbank Turk A.S. v. Netdeyiz, WIPO Case No. DWS2008-0002. Another case where the Respondent failed to respond. The domain name in issue was so distinctive that the panel concluded that the respondent must have known of it. The Complainant cites this case also in support of the proposition that non-use of a domain name is evidence of bad faith. The Panel can find nothing in this decision to support that proposition, save that the Telstra case is cited with approval. The key to this case was the domain name itself;

- NFL Properties Inc. et al. v. BBC Ab, WIPO Case No. D2000-0147. This case is cited in support of the proposition that the failure to respond to a cease and desist letter may be evidence of bad faith. The complainant`s trade mark was highly distinctive, the respondent was not making any use of the domain name, the respondent did not respond to the complaint and there was some suggestion that the respondent may no longer have existed. Another very different case;

- Playboy Enterprises International Inc. v. BEG Service KB, WIPO Case No. D2001-0494. Another case cited in relation to the Respondent`s failure to respond to the Complainant`s cease and desist letter. In this case the key point was that the explanation provided by the respondent for having registered the domain name "strain[ed] credulity". The Panel accepts that the failure to respond to a cease and desist letter may in certain circumstances tip the balance as to whether or not the respondent is acting in bad faith, but the Panel believes that as in the cases cited on this point by the Complainant, there will usually be other factors to weigh in the balance. That failure on its own is unlikely to be enough.

In fairness to the Complainant, it must be acknowledged that at the time the Complaint was lodged the Respondent had not responded to the cease and desist letter and did not appear to be making active use of the Domain Name, so the Complainant had every reason to believe that there would not be a Response.

However, the Complainant has failed to satisfy the Panel that the Domain Name was registered and is being used in bad faith. The factual background, as it appears in Section 4 above, leads the Panel to believe it probable that the Respondent registered the Domain Name without any thought of the Complainant. Nothing that the Complainant has put before the Panel has changed the Panel`s view.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Tony Willoughby
Sole Panelist

Dated: May 21, 2009