Dutch company N.V. Nutricia, producers of a food supplement product called “Fortini,” filed a UDRP against the domain Fortini.com.
The Respondent in this case is Epik founder, Rob Monster. Epik is simply the registrar and not the Respondent in this case.
Fortini.com was registered in 2012 and the Complainant has acquired the registration of trademarks in Europe and Mexico, among other global locales, around 2010. They don’t have an active trademark in the US, having filed an “express abandonment” of the FORTINI mark application in February.
The domain was offered for sale via an Epik lander; according to the UDRP, the asking price was $350,000 dollars. The Complainant provided its own valuation, standing at $5,146 dollars. There’s no information on how that lesser valuation was achieved.
All while the Respondent elevated the keyword’s use as a “common surname,” the NAF panelist pointed out that this argument conflicts with the asking price of more than 1/3 of a million dollars.
N.V. Nutricia v. Rob Monster
Claim Number: FA2106001952511
Complainant is N.V. Nutricia (“Complainant”), represented by Madelon Lapidus of Holland & Hart LLP, Colorado, USA. Respondent is Rob Monster (“Respondent”), represented by Daniel R. Prince, Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Sozos-Christos Theodoulou as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 24, 2021; the Forum received payment on June 24, 2021.
On June 24, 2021, Epik Inc. confirmed by e-mail to the Forum that the
On June 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on June 29, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 16, 2021.
Additional Submission by Complainant was received on July 21, 2021. Panel finds that Additional Submission complies with Forum Supplemental Rule 7.
On July 22, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sozos-Christos Theodoulou as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Respondent requests that the Panel denies Complainant’s request for relief.
Complainant, N.V. Nutricia, produces a food supplement product called “Fortini”. Complainant maintains registration in the FORTINI mark with multiple authorities around the world, including Mexico, World Intellectual Property Organization (WIPO) / Madrid Protocol, and European Union, among other authorities(e.g. Mexican Institute of Intellectual Property (“MIIP”) Reg. 1,155,604 Apr. 28, 2010; World Intellectual Property Office (“WIPO”) Reg. 761,260, registered June 7, 2021). See Compl. Ex. 3. The disputed domain name,
Respondent does not have any rights or legitimate interests in the
Respondent registered and uses the
Respondent, Rob Monster, operates several internet-related businesses and is an investor and speculator in domain names. Respondent acknowledges Complainant’s registrations of the FORTINI mark with various authorities outside the United States, but contents that Complainant does not have any trademark rights within the United States because it unsuccessfully applied for registration in the FORTINI mark with the United States Patent and Trademark Office (USPTO). Further, Complainant’s mark is generic because the term “Fortini” is a common surname amongst individuals.
Respondent does have rights and legitimate interests in the
Respondent did not register and does not use the
C. Additional Submissions
In his Additional Submission, Complainant has rebutted most of the Respondent’s contentions presented above.
Complainant is a multinational company specializing in therapeutic food and clinical nutrition. It has notably produced since 2003 a food supplement product called “Fortini”.
Complainant is the owner of a large-sized portfolio of trademarks and domain names, being active in over 100 countries worldwide.
Before launching itself into the usual threefold test, the Panel wishes to confirm that, based on Rules 10 and 12 of the Rules for Uniform Domain Name Dispute Resolution Policy, as well as on Forum Supplemental Rule 7, it has decided to accept the Additional Submission as filed by the Complainant on July 21, 2021.
Having said this, the Panel will now proceed with the examination of the substance of the matter.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant claims rights in the FORTINI mark through its registration with multiple authorities around the world. Registration of a mark with multiple authorities is sufficient to establish rights in a mark under Policy Para. 4(a)(i). See Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (finding Complainant has trademark rights in the BITTREX mark through registration of the mark with the EUIPO and the USPTO.). Complainant provides a record of its registrations with multiple authorities in its FORTINI mark including Mexico, WIPO / Madrid Protocol, and European Union (e.g. MIIP Reg. 1,155,604 Apr. 28, 2010; WIPO Reg. 761,260, registered June 7, 2021). See Compl. Ex. 3. Therefore, the Panel finds that Complainant has rights in the FORTINI mark under Policy Para. 4(a)(i).
Complainant argues that the
The Panel notes Respondent’s arguments that Complainant’s registrations of the FORTINI mark are with agencies outside the United States, while Complainant’s attempts to register the domain name with the USPTO may have been unsuccessful up to this point. However, past panels have held that a Complainant’s registrations need not be with the trademark authority in the Respondent’s country to be considered indicative of rights in a mark under Policy Para. 4(a)(i). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). The Panel recalls that Complainant has registered rights in the FORTINI mark in numerous jurisdictions. See Compl. Ex. 3. Further, the disputed domain name is international [“.com” gTLD]. Therefore, Panel finds that Complainant’s registrations with jurisdictions outside the U.S. do not negate a finding of rights and legitimate interests in the mark under Policy Para. 4(a)(i).
While Respondent alludes that the
Therefore, the Panel finds that the Complainant has proven that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has established rights under Policy Para. 4(a)(i).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy Para. 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy Para. 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have any rights or legitimate interests in the
Complainant secondly argues that Respondent is not using the
Complainant further argues that Respondent does not have any rights or legitimate in the
In view of the above, the Panel finds that Complainant has demonstrated that Respondent has no rights or legitimate interests in the Disputed Domain Name according to paragraph 4(a)(ii) of the Policy.
Registration and Use in Bad Faith
Complainant argues Respondent registered or uses the
Complainant additionally argues that Respondent registered and uses the
On a separate note, in consideration of Respondent’s assertions, the Panel finds that the doctrine of laches does not apply as a defense in UDRP cases. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
In view of all the above, the Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith according to paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the
Sozos-Christos Theodoulou, Panelist
Dated: August 2, 2021
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Original article: Epik UDRP shows $350,000 asking price for “common surname” :DomainGang
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