.nz Dispute Resolution Service
DRS Reference: 1143
Health Foods International Limited vs. Ehab Hammouda
Key words - identical trademark - unfair registration - transfer
Health Foods International Limited (Mr Jay Drezner - Complainant's Representative)
Cnr Kordel Place and Accent Drive
Represented by: Mr Marcus Woodhouse of AJ Park, Solicitors & Patent Attorneys, Wellington
United Arab Emirates 73624
2. Domain Name
3. Procedural history
The Complaint was lodged on 01 February 2016 and Domain Name Commission (DNC), notified the Respondent of the validated Complaint on 2 February 2016. The domain was locked on 02 February 2016, preventing any changes to the record until the conclusion of these proceedings.
The Respondent filed a Response to the Complaint on 22 February 2016 and the DNC so informed the Complainant on 8 March 2016. The Complainant filed a Reply to the Response on 16 March 2016. The DNC informed the parties on 13 April 2016 that informal mediation had failed to achieve a resolution to the dispute.
The Complainant paid Domain Name Commission Limited the appropriate fee on 27 April 2016 for a decision of an Expert, pursuant to Paragraph 9 of the .nz Dispute Resolution Service Policy ("the Policy").
Sir Ian Barker QC, the undersigned, ("the Expert") confirmed to the DNC on 02 May 2016 that he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality.
4. Factual background
4.1. The Complainant is the owner of several New Zealand-registered trademarks for NUTRA-LIFE in both word and logo form. The earliest of these trademarks (No. 118411) has a registration date of 27 September 1979 and a filing date of 31 January 1977. All of the trademarks were registered before the date of registration of the disputed domain name - i.e., 28 July 2013.
4.2. The Complainant's NUTRA-LIFE trademarks have been used in New Zealand by a company called Vitaco Health & Fitness (NZ) Limited under the authority and control of the Complainant. The marks have been used to market the Complainant's Nutra-Life health supplements in New Zealand. Between 2012 and 2015, over 5 million Nutra-Life branded products were sold in New Zealand with estimated retail sales of over $NZ100 million.
4.3. The Respondent's Dubai-based company entered into a Licence Agreement with the Complainant on 1 March 2008 which allowed the Respondent's company to use the above trademarks in relation to health-food products in specified countries in the Gulf and Middle East regions. The agreement was terminated on 11 October 2015.
4.4. The Respondent's website accessed by the disputed domain name advertises Nutra-Life branded health supplements. The Respondent's website features the same colour-scheme and logo. Similar products as are found on the Complainant's website at . The products featured on the Respondent's website are not those of the Complainant or of any associated entity.
5. Parties' contentions
(a) The Complainant claims that the disputed domain name is an unfair registration in that the disputed domain name reflects the Complainant's trademarks with which it is identical.
(b) The Respondent's website mimics the Complainant's website accessed by a domain name which is identical with the Complainant's domain name except for the presence of a hyphen between 'nutra' and 'life'.
(c) Persons visiting the Respondent's website are likely to think that the disputed domain name, the Respondent's website and the products offered thereon are associated with the Complainant which they are not.
(d) The Respondent is using the disputed domain name in a way that is likely to confuse, mislead or deceive people or businesses into believing that the disputed domain name is in some way associated with the Complainant or authorised by it.
(a) The Respondent claims that he has New Zealand university degrees and that he operates through Brand Link Mea FZE (Respondent's company). He owns a New Zealand-registered company. His company markets international brands, including Nutra-Life.
(b) The Respondent's company owns Nutra-Life Health International Limited and is the brand-owner for that latter company's products. The Respondent's company is said to have catered to customers worldwide for two decades without any issue having been raised.
(c) The Respondent asserts that his company has worldwide rights to market "Nutra Life". His company owns 9 other Nutra-Life domain names.
(d) The Respondent, in rather florid terms, characterises the complaint as malicious and the Complainant as acting in bad faith. Many others are using the Nutra-Life brand and own domains such as < nutralife.ca > . The Complainant does not own Nutra-Life trademarks worldwide. Various minor distinctions were highlighted by the Respondent such as different slogans for and different packaging of Nutra-Life products. The Complainant does not object to others using the Nutra-Life brand.
(e) The Respondent has been operating professionally for at least 28 years without offending any customer or business.
(f) The Complainant made a "malicious" complaint to GoDaddy which was closed by GoDaddy on 29 September 2015.
(g) The Respondent produced no documentation in support of these broad allegations.
5.3. Complainant's Reply
(a) Brand Link Mea FZE is not a New Zealand-registered company as is shown by a search of the appropriate register. A company called Nutra-Life Health International Limited (NHIL), which the Respondent said had operated in New Zealand and elsewhere with worldwide offices, was incorporated in New Zealand in 4 September 2015 as is shown by its Certificate of Incorporation.
(b) The disputed domain name was registered on 28 July 2013 and therefore has not operated for four years as claimed by the Respondent. He registered the disputed domain name during his Dubai company's licensing arrangement with the Complainant to use the Complainant's trademarks in named Middle Eastern/Arab countries.
(c) The Complaint by the Complainant to GoDaddy's hosting service was not made in bad faith. Once aware of the existence of the disputed domain name, the Complainant requested GoDaddy's trademark infringement team to take down the disputed domain name. The disputed domain was suspended on 9 September 2015. On that date, the Respondent filed a counter-notification including a brand manufacturing certificate. Under GoDaddy's procedures, in the absence of court action by the Complainant, the disputed domain name was reactivated. The Complainant then elected to file this present Complaint.
(d) The Complainant emphasises that the present Complaint deals only with a New Zealand registered domain name and New Zealand registered trade marks. Hence, domain names registered in other jurisdictions are not relevant to this present dispute.
6. Discussion and findings
6.1. The dispute is governed by the Policy issued by Domain Name Commission Ltd on behalf of the Domain Name Commissioner. Critical portions of the Policy for present purposes are these:
- "3. Definitions ...
Unfair Registration means a Domain Name which either:
(i) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
(ii) has been, or is likely to be used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
4. Dispute Resolution Service
4.1 This Policy and Procedure applies to Respondents when a Complainant asserts to the DNC according to the Procedure that:
4.1.1 The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
4.1.2 The Domain Name, in the hands of the Respondent, is an Unfair Registration.
5. Evidence of Unfair Registration
5.1 A non-exhaustive list of factors which may be evidence that the Domain Name is an Unfair Registration is set out in paragraphs 5.1.1 - 5.1.5:
5.1.1 Circumstances indicating the Respondent has registered or otherwise acquired the Domain Name primarily:
(a) for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
(b) as a blocking registration against a name or mark in which the Complainant has rights; or
(c) for the purpose of unfairly disrupting the business of the Complainant; or
5.1.2 Circumstances demonstrating that the Respondent is using the Domain Name in a way which is likely to confuse, mislead or deceive people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the complainant;
5.1.3 The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the Registrant of Domain Names (Under .nz or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;
5.1.4 The Complainant can demonstrate that the Respondent has knowingly given false contact details to a Registrar and/or to the DNC; or
5.1.5 The Domain Name was registered arising out of a relationship between the Complainant and the Respondent, and the circumstances indicate that it was intended by both the Complainant and the Respondent that the Complainant would be entered in the Register as the Registrant of the Domain Name."
6.2. It will be seen that to support a complaint of this kind the Complainant must satisfy three elements
(a) Rights in respect of a name or mark (para 4.1.1);
(b) Identity or similarity between that name or mark and the Domain Name (para 4.1.1); and
(c) Unfair registration in the hands of the Respondent (para 4.1.2).
7. Rights in respect of a name or mark
7.1. There is no doubt because it owns relevant New Zealand trade marks, that the Complainant has rights in respect of the trade mark "NUTRA-LIFE". That in itself satisfies the first of the above requirements.
8. Identity or similarity between the name or mark and the Domain Name
8.1. The second requirement is to show that the Complainant's name or mark is identical or similar to the Domain Name.
8.2. The complainant's trade mark and the disputed domain name are identical. The second requirement is satisfied.
9. Unfair Registration
9.1. The Complainant has made out a case of blocking registration contrary to Paragraph 5.1.1(c) of the Policy because of the potential of unfairly disrupting the Complainant's business. The Respondent's website which mimics the Complainant's proves this contention. Users are bound to be confused when they access the Respondent's website. They are likely to assume that the website is that of the Complainant. The disputed domain name also comes within Paragraph 5.1.2 of the Policy.
9.2. It must be emphasised that this case concerns only a New Zealand-registered domain name. This fact appears not to be appreciated by the Respondent. The rights (if any) of the Respondent to use the Nutra-Life brand or to register domain names using the words Nutra and Life in other jurisdictions are irrelevant to these present proceedings.
9.3. The Complaint to GoDaddy is also irrelevant. The Complainant is entitled to invoke the Policy in respect of a New Zealand-registered domain name regardless of any procedures provided by GoDaddy.
9.4. The Respondent has not filed any evidence to substantiate his allegations of bad faith or malice on the part of the Complainant. Nor has he filed any evidence in support of his other allegations. The bad faith allegations must be dismissed. Indeed, as the material before the Expert provided by the Complainant shows, the incorporation of the Respondent's New Zealand company less than a year ago casts doubt on the Respondent's broadly-stated allegations in the Response.
10.1. The Complaint is upheld. I direct that the disputed domain name be transferred to the Complainant or its nominee.
Place of decision Auckland
Date 18 May 2016
Expert Name Hon Sir Ian Barker QC