Epik UDRP shows $350,000 asking price for “common surname” :DomainGang

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

PARTIES

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 , registered with Epik Inc.

PANEL

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.

PROCEDURAL HISTORY

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 domain name is registered with Epik Inc. and that Respondent is the current registrant of the name. Epik Inc. has verified that Respondent is bound by the Epik Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

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 postmaster@fortini.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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

Respondent requests that the Panel denies Complainant’s request for relief.

PARTIES’ CONTENTIONS

A. Complainant

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, , is identical or confusingly similar because the domain name wholly incorporates Complainant’s FORTINI mark while adding in the “.com” generic top-level domain (“gTLD”) to form a domain name.

Respondent does not have any rights or legitimate interests in the domain name because Respondent is not licensed to use Complainant’s FORTINI mark. Further, Respondent’s use of the fanciful FORTINI mark further establishes Respondent not having rights or legitimate interests in a mark. Respondent is not using the domain name in connection with a bona fide offering of goods and services nor for a legitimate noncommercial or fair use because Respondent is only offering the domain name for sale.

Respondent registered and uses the domain name in bad faith because Respondent is using the as an offer for sale for more than reasonable costs. Respondent is using the to profit from the goodwill associated with the FORTINI mark.

B. Respondent

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 domain name because Respondent registered the domain name with the intent of holding the name and possibly using it for a future internet business and not to compete with Complainant.

Respondent did not register and does not use the domain name in bad faith because Respondent parked a page that does not offer products under the FORTINI mark. Further, Respondent has never heard of Complainant nor was Respondent aware of Complainant’s FORTINI mark when it registered the domain name in 2012. Respondent contends that its counteroffer in excess of Complainant’s offer to sell the domain name does not amount to bad faith. Respondent contends that Complainant’s mark is a generic surname in common use. Complainant argues that the doctrine of laches applies here because it has taken nine years have passed between Respondent’s registration of the domain name and Complainant’s commencement of these proceedings.

C. Additional Submissions

In his Additional Submission, Complainant has rebutted most of the Respondent’s contentions presented above.

FINDINGS

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.

The disputed domain name was registered on March 7, 2012 by the Respondent and is currently available for purchase or lease.

DISCUSSION

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 domain name is identical or confusingly similar because it wholly incorporates Complainant’s FORTINI mark while adding the “.com” gTLD to form a domain name. Under Policy Para. 4(a)(i), the addition of the “.com” gTLD is generally insufficient to distinguish a domain name from the mark it incorporates. See SCOLA v. Wick, FA 1115109 (Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”). The gTLD added here is “.com”. Therefore, the Panel finds that the domain name is identical or confusingly similar under Policy Para. 4(a)(i).

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 domain name is comprised of a common term and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy Para. 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy Para. 4(a)(ii) and Policy Para. 4(a)(iii) and not under Policy Para. 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy Para. 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy Paras. 4(a)(ii) and 4(a)(iii)).

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 domain name because Respondent is not authorized to use Complainant’s FORTINI mark. Evidence that a respondent is not commonly known by a domain name, under Policy Para. 4(c)(ii), may be found where a respondent is not authorized to use a complainant’s mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, Complainant asserts -and Respondent has not successfully rebutted- that Respondent is not affiliated with Complainant nor is Respondent licensed to use Complainant’s FORTINI mark. Therefore, the Panel finds that Respondent is not commonly known by the domain name, thus not having any rights or legitimate interests in the domain name.

Complainant secondly argues that Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use, thus lacking rights or legitimate interests in the domain name, because Respondent is offering the domain name for sale. A general offer for sale may be evidence of a respondent’s lack of rights or legitimate interests in a domain name under Policy Paras. 4(c)(i) and (iii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). The domain name resolves to a webpage that offers the domain name for sale or lease by inviting users to submit offers to Respondent. See Compl. Ex. 5. Therefore, the Panel finds that Respondent does not have any rights or legitimate interests in the domain name, under Policy Para. 4(a)(ii), also due to Respondent’s offer for sale.

Complainant further argues that Respondent does not have any rights or legitimate in the domain name because Respondent utilizes a fanciful mark in the domain name. A respondent’s use of a distinctive or fanciful mark that has high association with a complainant may be an indication of a respondent’s lack of rights or legitimate interests in that mark. See Auto-trol Tech. (Canada) Ltd. v. Yuen Wei, FA 151121 (Forum May 1, 2003) (“The more distinctive the trademark is, the greater its influence in stimulating sales, its hold on the memory of the purchaser and the likelihood of associating similar designations on other goods with the same source. Therefore, Respondent is unlikely to have any legitimate connection with the GEOSTATION mark, and fails to establish rights in the domain name pursuant to Policy Para. 4(c)(ii).”). Complainant asserts that its mark is fanciful because its FORTINI mark is a term not found in a dictionary making it distinctive. Further, Respondent has not made any use of the domain name other than for its sale. Therefore, the Panel finds that Respondent does not have any rights or legitimate interests in the domain name, also because of Respondent’s use of a fanciful mark under Policy Para. 4(c)(ii).

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 domain name in bad faith because Respondent is selling the domain name in excess of costs of registration or maintenance associated with the domain name as a counteroffer to Complainant’s initial offer. Bad faith may be found, under Policy Para. 4(b)(i), where a domain name is for sale at a price that is in excess of costs of registration or maintenance associated with a domain name. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy Para. 4(b)(i).”); see also Galvanize LLC, dba Galvanize v. Brett Blair / ChristianGlobe Network, FA1405001557092 (Forum June 26, 2014) (finding that the respondent registered and used the disputed domain name in bad faith under Policy Para. 4(b)(i) because it countered Complainant’s offer to buy the disputed domain name with an offer to sell the disputed domain name of $100,000). Complainant’s initial offer was countered by Respondent. Respondent’s counter offer for the domain was $350,000. Complainant argues that, based on findings from previous panels, that Respondent’s counter offer definitely exceeds out-of-pocket costs. Further, Complainant provides a copy that the market value of the domain name is closer to $5,146. See Compl. Ex. 7. Therefore, the Panel finds that Respondent is acting in bad faith under Policy Para. 4(b)(i).

Complainant additionally argues that Respondent registered and uses the domain name in bad faith to profit off of the goodwill associated with the FORTINI mark. Use of a domain name that is confusingly similar to profit off of the goodwill associated with a complainant’s mark may be evidence of bad faith under Policy Para. 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy Para. 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). Complainant argues the domain name is confusingly similar because of the domain name incorporating Complainant’s FORTINI mark. Complainant asserts that Respondent is using the domain name to profit off the goodwill associated with Complainant’s FORTINI mark by selling the domain name for $350,000. According to Complainant, Respondent has not provided justification for such a value. Further, these facts prove that Respondent knew well of the Complainant’s trademark’s reputation, when initially registering and/or when annually renewing the disputed domain name. Therefore, the Panel finds that Respondent acted in bad faith under Policy Para. 4(b)(iv).

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.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the domain name be TRANSFERRED from Respondent to Complainant.

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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