In a recent decision under the Uniform Domain Name Dispute Resolution Policy (the UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of a domain name notwithstanding the Complainant's trade mark rights obtained prior to the registration of the Domain Name.

The Complainant, L-Nutra, Inc., was an American company based in California and specialized in the field of nutrition related to longevity and health span. It had held, since 2017, two United States trade mark registrations in the term NUTRITION FOR LONGEVITY in connection with dietary supplements and dietary nutritional guidance and operated a website at www.l-nutra.com. It also filed an application for the trade mark in the term LONGEVITY NUTRITION in 2019.

The Respondent, Douglas Kantner, was an individual based in Ohio, United States, who had been engaged in the business of manufacturing, marketing and distributing food and nutritional products for over 30 years. He was connected with a company, AME Nutrition, which supplied plant and dairy ingredients to third parties. In July 2018, the Respondent reserved the business name "Longevity Nutrition, LLC" in Ohio and filed, in December 2018, a Certificate of Formation for a company entitled "Longevity Nutrition, LLC" in Delaware.

The Domain Name <longevitynutrition.com> was acquired by the Respondent in August 2018, shortly after he reserved the business name as described above. In December 2018, the Respondent used the Domain Name to point to a website, which featured "Longevity Nutrition" in connection with a stylized fork and knife logo and provided his contact details.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements:

  1. The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
  2. The 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.

As far as the first limb was concerned, the Complainant contended that the Domain Name was confusingly similar to its NUTRITION FOR LONGEVITY trade marks as the term LONGEVITYNUTRITION was merely a transposition of the dominant elements of these marks. The Respondent argued that the Complainant had not proved its unregistered trade mark rights in the term LONGEVITY NUTRITION and applied for this trade mark six months after he had acquired the Domain Name. The Respondent further challenged the confusing similarity as he used LONGEVITY NUTRITION as his primary mark while the Complainant used NUTRITION FOR LONGEVITY as a tagline in very small font below its L-NUTRA house mark.

The Panel conducted a confusing similarity test based on the Complainant's NUTRITION FOR LONGEVITY trade marks and found that the dominant elements of these marks were fully incorporated in the Domain Name, which was sufficient to reach the threshold required under the first limb.

With regard to the second limb, the Complainant submitted that the Respondent acquired the Domain Name in an attempt to misleadingly divert consumers to his own website, which was likely to market substantially identical goods and services as provided by the Complainant. According to the Complainant, such use of the Domain Name should not confer any rights or legitimate interests under the Policy. In response, the Respondent underlined that he had taken good faith steps and made substantial business investments in preparation to use the Domain Name before he became aware of the Complainant and its business, notably including the reservation of the company name "Longevity Nutrition, LLC" and the subsequent incorporation of the company, the creation of a website and other promotional materials in connection with the Domain Name as well as a clearance search for LONGEVITY NUTRITION performed by a trade mark lawyer.

The Panel first pointed out that the Complainant had failed to produce any evidence showing its actual use of the NUTRITION FOR LONGEVITY trade mark with any goods or services, which strongly suggested that this trade mark was a relatively descriptive mark and subject to some overlapping potential third party use, notwithstanding the Complainant's established trade mark rights. The only evidence of use of this trade mark (ironically provided by the Respondent) was the logo displayed on the Complainant's website, where the term NUTRITION FOR LONGEVITY was merely a small tagline and could hardly be seen as a dominant element. The fact that the Complainant could not establish any degree of its reputation attached to this mark made it difficult to convince the Panel that the Respondent had targeted the Complainant by registering the Domain Name.

As far as the Respondent was concerned, the Panel noted that no evidence had been submitted regarding the Respondent's claimed trade mark search. Furthermore, the Respondent did not provide any details as to his planned business, which could not exclude the possibility that his business might potentially compete with the Complainant's goods and services. However, since the Complainant had failed to provide any relevant evidence in this regard, the Panel could simply rely on the Respondent's link with the company AME Nutrition, which did not look to be actually competing with the Complainant, and the Respondent's web page associated with the Domain Name, where the term NUTRITION FOR LONGEVITY was incorporated in a logo with a fork and knife. The Panel therefore considered that it was more likely than not that the Respondent was unaware of the Complainant's trade mark when he acquired the Domain Name for his claimed business.

Based on the above, the Panel concluded that the Complainant had failed to establish that the Respondent did not have any rights or legitimate interests in the Domain Name. However, given the gaps contained in both parties' submissions, the Panel considered that the Respondent's actual future use of the Domain Name could cast a different light on the Panel's assessment under the second limb to the extent that the Complainant would be entitled to refile a complaint in the event that the Respondent's future use of the Domain Name turned out to be for a business competing with the Complainant.

Since the Complainant failed to satisfy the second limb, there was no need for the Panel to address the issue of bad faith under the third limb, although many circumstances indicating the Respondent's lack of bad faith were already covered in the Panel's analysis above. Finally, it should be noted that, on the balance of probabilities, the Panel rejected the Respondent's request for a finding of Reverse Domain Name Hijacking, given that the complaint was not unreasonable under the circumstances.

This decision illustrates once again that prior trade mark rights are not always a decisive factor in the panel's assessment under the second and third limbs of the Policy. Another lesson that may be taken from this case is that trade mark owners should always try and provide tangible evidence with regard to the actual use of the trade mark in question and, where applicable, any degree of public recognition and reputation. This is particularly the case when it is not straightforward to establish that the disputed domain name has been registered in an attempt to target the trade mark at issue.