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General Nutrition Loses Bid To Grab GNC.Asia; Domain Holder Represented By Zak Muscovitch

Posted on the 20 September 2014 by Worldwide @thedomains

We don’t cover to many .Asia UDRP’s but this one caught our eye because the Complainant General Nutrition Investment Company owns and operates vitamin and supplement stores all over the United States simply know as GNC.

The domain holder, The Web Group of Washington, D.C., Uwas represented by Zak Muscovitch of Toronto, Ontario, Canada.

The three member panel of Douglas M. Isenberg, Diane Cabell and the Hon. Carolyn Marks Johnson agreed that the term “GNC” was generic and was used all over the world in different TLD’s by different registrants.

While the domain went to a parked page and was offered for sale, none of the links related to the Complainant nor contained any links to products or any vertical related to the Complainant.

Here are the highlights of decision”

“Complainant states that it “owns more than 150 trademark registrations” for the trademark GNC (hereafter, the “GNC Trademark” or the “GNC Mark”) “in over 75 countries, including the United States, China, Hong Kong, Japan, Singapore, South Korea, Taiwan, Thailand, and Vietnam”. Complainant has provided a copy of U.S. Reg. No. 3,793,104 for the mark GNC.COM for use in connection with “online retail store services featuring health foods, dietary supplements, nutritional supplements, herbs, vitamins, sports nutrition products, fitness products and apparel, cosmetics, body care, diagnostic exercise or aromatherapy products” (first used in commerce on December 31, 1999). Complainant states that, “[f]rom 2012 to 2013 alone, GNC’s sales under the GNC Mark totaled more than $5 billion”.

The Disputed Domain Name was created on October 21, 2013.

In its Response, Respondent contends, in relevant part, as follows:

– “Respondent registered the Domain Name exclusively because it was a short, common, three-letter acronym that was capable of non-infringing use by a multitude of parties all over the world” and “at no time did Respondent ever register the Domain Name to target Complainant, or to take advantage of Complainant, or to interfere with Complainant, or to sell to Complainant.”

In support thereof, Respondent provides a list of 103 three-letter domain names in the “.asia” Top-Level Domain (TLD) that Respondent registered at the same time he registered the Disputed Domain Name – which Respondent contends is “strong evidence corroborating Respondent’s allegation that it registered the Domain Name in good faith due to its attractiveness and value solely as an generic [sic] acronym domain name, and not to target Complainant”. (Emphasis omitted.)

– The mark GNC “is certainly not unique to Complainant”. In support thereof, Respondent refers to several other domain names (including , , , , , , and ) registered by third parties, as well as numerous other third-party uses of the mark GNC worldwide, such as (among many others) U.S. Reg. No. 2,310,303, owned by Great Northern Corporation; “GNC Consulting Inc.” (a software company in Ukraine, China and the United States); “Graphic Novel Cafe” in New Zealand; “GNC Bioferm Inc.” (a manufacturer of enzyme products in Canada); and the “Good News Crusade” (evangelical ministry in the United Kingdom). As a result, “the acronym, ‘GNC’ is commonly used all over the world by a multitude of persons who are totally unassociated with Complainant”. (Emphasis omitted.)

– A declaration from Respondent’s “principal,” John Gates, states that he had never heard of Complainant or the GNC Trademark prior to notice of the dispute that led to this proceeding.

– “Respondent acknowledges that Complainant has several registered trademarks for GNC and therefore meets the first part of the three-part UDRP test.”

– Respondent has rights or legitimate interests in the Disputed Domain Name because, inter alia, “where a domain name is generic, the first person to register it in good faith is entitled to the domain name”; “registration of two, three, and four-letter domain names, even by domain name speculators, can constitute a ‘legitimate interest’” where the letters are “in common use by many parties to identify many goods and services”; and “[s]peculating and investing in generic and descriptive domain names, is a legitimate and well-established business and that in and of itself, can confer a ‘legitimate interest’ in such a domain name”.

– Respondent did not register and use the Disputed Domain Name in bad faith because, inter alia, “[a]bsent direct proof that a generic domain name was registered solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use”; “[t]here is absolutely no evidence that Respondent registered the Domain Name to target Complainant”; “the pay-per-click ads [on Respondent’s website] did not infringe or relate to Complainant’s goods or services, so the reliance upon the mere existence of non-infringing PPC ads to prove ‘bad faith’, is totally misplaced”; “the automated and general ‘for sale tag line’ that Complainant complains of… is also not evidence of bad faith [because] Respondent did not target Complainant at all”.
6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

Where a complainant does not prove one or more of these elements, the panel is compelled to issue a decision denying the complaint, regardless of the complainant’s ability to prove the other element(s) required by the Policy. \

Given that the Panel in the instant case finds,that the Complainant has failed to prove the third element of the Policy – that is, (bad faith) the Panel makes no findings with respect to the second element of the Policy.

Although it is apparent to the Panel that the GNC Trademark has a long history of use and is well-known in numerous countries, it is also apparent to the Panel that the acronym “GNC” also is used by numerous unrelated third parties for goods and services seemingly different than those offered by Complainant. Therefore, the Panel finds that mere registration and use of the Disputed Domain Name, without more, does not constitute bad faith under the circumstances of the facts in this proceeding.

Indeed, the Panel agrees with the decision cited by Respondent, TMG Technologie Management Gruppe Unternehmensberatung für Markt und Innovation GmbH v. Whois Privacy Protection Service, Inc., WIPO Case No. D2005-0161 (denying transfer of the domain name ). In that case, the panel wrote:

“Complainant seems to infer bad faith by assuming that Respondent had knowledge of Complainant and its trademarks prior to the Domain Name registration, and that the Respondent hoped to benefit in one way or another from the fame of Complainant and its trademarks. In weighing that assumption, the Panel notes first that Complainant is of course not the only entity in the world entitled to use those three letters in connection with an offering of goods or services, on the contrary, it is more than likely that many entities around the world could be entitled to use a three-letter abbreviation such as TMG. It is entirely feasible for the Respondent to make a bona fide offering under the disputed domain name . The Complainant has not given any evidence of to what extent the TMG mark is known, and has not presented any evidence to support his assertion that the Respondent knew of the mark when registering the Domain Name.

The Panel also notes that the Complainant has not filed any evidence in support of his claim that the disputed domain name is likely to mislead or deceive the Complainant’s customers. Further more [sic], the Complainants has not provided evidence that suggests that it uses the word TGM alone in its advertising, marketing, or sale of its services or its business. Nor has the Complainant provided evidence that it, or its services, are known by the letters TGM alone.”

Here, not only is the GNC acronym used by many others, but Respondent denies having knowledge of the GNC Trademark prior to this dispute, Respondent offers a plausible reason for its registration of the Disputed Domain Name, and the monetized parking page associated with the Disputed Domain Name is not used in any way that would create confusion with Complainant. As the Presiding Panelist here wrote in a previous decision, “In some cases, particularly where the links on such a page are not competitive with or disruptive to a relevant trademark owner, or confusing to visitors, such activity may not violate the Policy”.

Finally, with respect to Complainant’s argument that bad faith exists as a result of Respondent’s offer to sell the Disputed Domain Name, the Panel agrees with the decision cited by Respondent, Havanna S.A. v. Brendhan Hight, Mdnh Inc, WIPO Case No. D2010-1652, in which the respondent there argued that “absent any specific intent derived from exploitation of the goodwill associated with an incidental trademark, the general offer to sell commercially valuable ‘dictionary word’ names is a legitimate business practice”. While the GNC acronym is not a “dictionary word,” it is nevertheless in widespread use worldwide, and the Panel therefore applies the same reasoning.

As a result, the Panel finds that Complainant has failed to prove the third element of the Policy.

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