Domain name - Domain name dispute resolution policy - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use.

Complainant was registrant of United States trademark. Registrant registered the domain name, vitamist.com. Complainant alleged that its registered marks and the registered domain name were identical and that Respondent registered the domain name at issue in bad faith.

Held, Name Transferred to Complainant.

The Complainant must establish both bad faith registration and bad faith use.

It is clear that the domain name VITAMIST.COM is identical or confusingly similar to the trademark registered and used by Complainant, VITAMIST. It is also clear that Respondent has no rights or legitimate interest in respect of the domain name. This is bad faith registration.

Respondent also used the domain name vitamist.com in violation of Complainant's policy regarding the use of its trademarks despite that fact that it has agreed not to use the domain name.  The use of said domain name caused damage to Complainant by diverting traffic away from Complainant's website for its own gain.  This was found to be bad faith use.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
 
 
 
 

Decision referred to
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Yachnin, Panelist: -

Procedural History
The above entitled matter came on for an administrative hearing on April 12, 2000, before the undersigned, on the complaint of Mayor Pharmaceutical Laboratories, Inc (hereinafter referred to as "Complainant Mayor"), and on the complaint of the co-complainant Karemor International, Inc. (hereinafter referred to as "Complainant Karemor" against Wende M. Boone (hereinafter referred to as "Respondent"). The Complainant was represented by Robert J. Hartmann, Esq., of Counsel to Robert J. Hartmann, Ltd., 2406 South 24th "Street, Phoenix, Arizona 85034. The Respondent has not filed a response to the complaint, and there has been no representation on behalf of the Respondent interposed. Upon the written submitted record, the following decision is made:

Procedural Findings
Domain Name: VITAMIST.COM
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Wende M. Boone 
Date of Domain Registration: May 28, 1997
Date Complaint Filed: March 13, 2000
Due Date for Response: April 5, 2000

Respondent did not submit a response to the complaint.

Date of Commencement of Administrative Proceeding in Accordance with Rule
2(a)1 and Rule 4(c) : March 13, 2000.

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (hereinafter referred to as "The Forum") forwarded the complaint to the Respondent on March 13, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(d). The Forum immediately notified the above Registrar, Network Solutions, the Internet Corporation for Assigned Names and Numbers (ICANN), and the complainants, that the administrative proceedings had been commenced. Respondent did not submit a response to The Forum within twenty (20) days pursuant to Rule 5(a) .

On May 28, 1997, Respondent registered the domain name "VITAMIST.COM" with Network Solutions, Inc., the entity that is the Registrar of the domain name.  By registering the domain name "VITAMIST.COM" with Network Solutions, Inc., Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy and the Uniform Domain Name Dispute Resolution Policy. 

Findings Of Fact
1. Complainant Mayor is in the business of manufacturing nutrient preparations consisting of vitamins, minerals, herbal/botanical extracts and combinations thereof.
The Complainant Karemor is principally engaged in the business of exclusive marketing of the Complainant Mayor’s nutrient preparations through the guiding principals of network marketing.

All products are sold to the general public exclusively through registered distributors of the Complainant Karemor and most of the products marketed are labeled with the
VitaMist trademark.

3. On December 4, 1986, Complainant Mayor filed with the United States Patent and Trademark Office, an application for registration for the trademark VITAMIST, and on April 11, 1989, the United States Patent and Trademark Office issued the registration for VITAMIST under registration number 1,533,832 for breath freshener composition.

4. On May 11, 1984, Yurika Food Corporation filed with the United States Patent and Trademark Office, an application for registration for the trademark VITA-MIST, and on May 5, 1985, the United States Patent and Trademark Office issued the registration for VITA-MIST under registration number 1,322,946 for liquid vitamin/breath freshener preparation. This trademark was subsequently assigned to the Complainant Mayor and recorded at the United States Patent and Trademark Office on October 6, 1988 in reel 0620 at frame 598.

5. In addition, the following trademarks for VITAMIST were issued to the
Complainant Mayor:
 

Date                         Country   Registration number 
 March 15, 1991       Australia           A552266 
 September 5, 1997  Japan    2,722,931 
 June 26, 1992   United Kingdom  1505073 
 February 25, 1994  Mexico  453,204 
 

6. On May 28, 1997, Registrant registered the domain name in controversy  "VITAMIST.COM" with the Registrar Network Solutions, Inc.

7. Shortly after registering the domain name, Complainant learned of the registration
of the domain name in question when it found that the Respondent established a web site at the VITAMIST.COM address. When the Respondent was notified that the registration and use of the name infringed upon the Complainants rights, Respondent agreed to, and did abort the web site. 

8. Upon attempting to register the name in 1999, the Complainant Karemor learned that the name was still registered to Respondent. When Complainants then attempted to have Respondent assign the domain name to the Complainant Karemor, Respondent advised that the domain name was transferred to one Ray Terlaga. Notwithstanding the aforesaid, to date no assignment has ever been filed or entered with the Registrar transferring the domain name to said Ray Terlaga.

9. At the time of the registration, the Registrant was, and still is, a distributor of the
Complainant.

10. When Respondent became a distributor of Claimant Karemor, Respondent signed an agreement by which Respondent agreed to abide by the policies and procedures of the Complainant Karemor.

11. Section XVI(A) of the Complainant Karemor policies and procedures states that "[t]he name Karemor and the names of all KareMor Products are the trademarks of KareMor International, Inc. and or Mayor Pharmaceutical Laboratories, Inc. Only KareMor is authorized to produce and market products and literature under these trademarks." Subsection (C) states that "[n]o person shall use the KareMor name, logos, trademarks or copyrighted materials in any advertising not produced by KareMor without the express written permission from KareMor." 

12. The registered name "VITAMIST.COM", is identical, or confusingly similar, to the trademark in which Complainant has rights, and the Respondent does not have any right or legitimate interests in respect to the domain names "VITAMIST", and the domain name has been registered and is being used in bad faith.

13. Complainant has been damaged by the acts of the Registrant and will continue to be damaged unless the domain names "VITAMIST.COM is transferred to Complainant.

14. Respondent made no legitimate use of the domain name and seeks to profit from its registration of the name by trading upon the good will associated with Complainant’s marks. 

15. Complainant’s prayer for relief requests that the domain names be transferred from the Respondent to the Complainant KAREMOR.. 

Conclusions
The undersigned certifies that he has acted independently and has no known conflict of interest to serve as Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions: 

1. The domain name "VITAMIST.COM" is identical or confusingly similar to Complainant’s trademarks "VITAMIST" to which Respondent has no right or legitimate interests. 

2. Respondent registered and used the name "VITAMIST.COM" in spite of the fact that prior thereto it had agreed not to do so as more particularly set forth in Paragraph "11".

3. By use of the domain name, the Respondent intentionally attempted to attract, for commercial gain, internet users of the Respondent’s 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 the Respondent’s web site or location of a product or service of the Respondent’s web site or location. 

4. The Respondent’s action in using the name "VITAMIST.COM" was done primarily for the purpose of disrupting the business of the Complainant.

5. Respondent registered and used the domain name in bad faith.

6. The Respondent has no right or legitimate interest in respect to the domain name.

Decision
Based upon the above findings and conclusions, and pursuant to Rule 4(I), it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAMES "VITAMIST.COM", REGISTERED BY RESPONDENT, BE TRANSFERRED TO COMPLAINANT KAREMOR INTERNATIONAL, INC.