Healthy Pets, Inc. d/b/a Pet Health Solutions, are the owners of the registered mark JOINT MAX. The mark was registered in 2003.
The domain JointMax.com was owned and operated by the company, until they failed to renew it. The domain was snapped by its Korean registrant in September 2020, after it was not renewed.
In the ensuing UDRP, the Complainant pointed out that they own a registered mark while the Respondent said that they acquired the domain due to its generic keywords, joint and max.
According to the UDRP:
Respondent lists other common word domain names that it also owns, which include a descriptive word and “max”: <keymax.com>; <gamemax.com>; <megamax.com>; <climbmax.com>; <seniormax.com>; <drivemax.com>; <studiomax.com>; <grassmax.com>; and <bonejoint.com
These domains are parked with the Uniregistry Market and are available for sale; in other words, they are not developed. However, the Forum (NAF) panelist, Antonina Pakharenko-Anderson, identified this type of use as investment assets, ordering the domain JointMax.com to remain with the Respondent.
Moral of the story: renew your domains and ensure that they are renewed.
The domain transfer was denied.
Healthy Pets, Inc. d/b/a Pet Health Solutions v. Kwangpyo Kim
Claim Number: FA2112001976154
PARTIES
Complainant is Healthy Pets, Inc. d/b/a Pet Health Solutions (“Complainant”), represented by Jeffrey Sonnabend of SonnabendLaw, New York, USA. Respondent is Kwangpyo Kim (“Respondent”), Republic of Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , registered with GoDaddy Online Services Cayman Islands Ltd..
PANEL
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Antonina Pakharenko-Anderson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on December 7, 2021; the Forum received payment on December 7, 2021.
On December 8, 2021, GoDaddy Online Services Cayman Islands Ltd. confirmed by e-mail to the Forum that the domain name is registered with GoDaddy Online Services Cayman Islands Ltd. and that Respondent is the current registrant of the name. GoDaddy Online Services Cayman Islands Ltd. has verified that Respondent is bound by the GoDaddy Online Services Cayman Islands Ltd. 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 December 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2022 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@jointmax.com. Also on December 15, 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 January 3, 2022.
On January 11, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Antonina Pakharenko-Anderson 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.
PARTIES’ CONTENTIONS
A. Complainant
Complainant – Healthy Pets, Inc. – is a wholesaler, retailer, and distributor of pet health related products, including among others, pet nutritional products.
One of Healthy Pets, Inc.’s principal products is Joint Max brand pet joint supplement, sold under its Pet Health Solutions d/b/a. Starting in August of2001, Healthy Pets, Inc. has owned the domain to promote both the JOINT MAX brand supplement, as well as many other of Healthy Pets, Inc. ‘s products. The domain, and the website hosted at it, are Healthy Pets, Inc.’s principal domain and website, respectively. The domains were registered using Healthy Pets, Inc.’s Pet Health Solutions d/b/a. The domain is referenced (i.e., printed) on Joint Max product and other product labels, directing customers to Healthy Pets, Inc.’s website hosted at . The products labeled with the domain have annual sales of over $1.2 million. Healthy Pets, Inc.’s advertising budget in connection with these products exceeds $200,000 annually.
Healthy Pets, Inc. first learned that it had lost ownership and control of the domain on or about January 29, 2021, during a routine, periodic review of Healthy Pets, Inc.’s domain assets. Healthy Pets, Inc. determined that Healthy Pets, Inc. had inadvertently failed to renew its registration of the domain when that domain came up for renewal. Upon learning that Respondent had obtained ownership of the domain, Healthy Pets, Inc. attempted to reach Respondent to resolve the domain ownership matter. As of the date of this declaration, Respondent has not responded to Healthy Pets, Inc.’s communications.
Complainant, Healthy Pets, Inc. d/b/a Pet Health Solutions, has rights in the JOINT MAX mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,695,014, registered Mar. 11, 2003). See Amend. Compl. Ex. 1. Respondent’s domain name is confusingly similar to Complainant’s mark since it incorporates Complainant’s mark in its entirety, omitting the space between terms in the mark and appending the “.com” generic top-level domain (“gTLD”).
Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent operates a “link farm” for arthritis and/or joint health related goods and services. Furthermore, Respondent lacks rights and legitimate interests in the domain name because the domain name used to be Complainant’s principal domain, starting in August 2001 and until the domain name was inadvertently allowed to lapse.
Respondent registered and uses the domain name in bad faith because Respondent hosts pay-per-click hyperlinks on the resolving website, presumably to receive click-through advertising fees. Moreover, Respondent had actual knowledge of Complainant’s rights in the JOINT MAX mark based on the fact that Respondent registered the Domain Name following an unintentional lapse in Complainant’s ownership of the domain name and because Respondent knew from bidding on Namejet.com Auction that it was bidding on a domain name that had been recently un-renewed by an ongoing business concern.
B. Respondent
Respondent arguments are that there is no basis for transferring the disputed domain name (the “Disputed Domain”) to Complainant. The Respondent registered the Disputed Domain on 15 Sep, 2020, and has maintained continuous ownership over the past 1 years, yet Complainant has taken no action until it filed this Complaint. Respondent had no knowledge of Complainant when he purchased the Disputed Domain. The Disputed Domain is a combination of common, descriptive words with intrinsic value as a short memorable domain name. Respondent only became aware of the existence of Complainant when this claim was filed. The facts demonstrate that the Disputed Domain was registered because of its inherent independent value; that Respondent never targeted or attempted to sell the Disputed Domain to Complainant; and that for over 1 years the Disputed Domain has been used in good faith in a manner consistent with the descriptive terms of the words “Joint” and “Max,” wholly unrelated to Complainant. Therefore, given the short history of Complainant’s inaction, the fact that the Disputed Domain is undoubtedly a combination of two generic words and the demonstrable lack 2 of any evidence of bad faith, this claim is highly questionable and must fail. Moreover, it appears this claim was only filed after Complainant chose not to purchase the Disputed Domain after its recent (FEB 2020) unsolicited and anonymous offer to purchase the Disputed Domain.
C. Additional Submissions
Complainant submits the instant brief in reply to Respondent’s Response to Complainant’s Complaint on January 6th, 2022.
Complainant states that, contrary to the Respondent`s contentions, as a matter of law, the words “joint” and “max”, as used in the mark JOINT MAX, are not descriptive; instead, they are presumed through registration to be distinctive identifiers of Complainant’s products. Under United States trademark law, a trademark registration is prima facie evidence of complainants’ rights in their asserted marks. The presumption of complainants’ rights includes the presumption that the marks are not descriptive but are, instead, distinctive.
Here, Respondent offers only the bare statement that the words comprising the trademark/domain are “common, descriptive words”, but offers no actual competent evidence to support this conclusion. On the other hand, Complainant has submitted a copy of its certificate of registration for its JOINT MAX mark.
In direct contradiction to Respondent’s position, case after case (after case) has held that revenue generating link farms are neither legitimate offerings of goods or services under Policy ¶ 4(c)(i) nor legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent alleges that it registered and used the disputed domain in good faith. Its allegations are neither credible nor legally sufficient. It defies rationality to suggest that consumers would decide to type “jointmax.com” into their browsers because they spontaneously conjured into consciousness the terms “joint” and “max”. The only plausible reason any consumer would do so is because of a familiarity with Complainant’s JOINT MAX product, with or without reference to the domain printed on the side of every JOINT MAX bottle. Clearly, Respondent valued the disputed domain based on Respondent’s actual knowledge of Complainant’s business, not through ignorance of it.
FINDINGS
The trademark(s) or service mark(s) on which the complaint is based is JOINT MAX for “Nutritional Supplements for animals and humans” in class 005 as claimed in incontestible US Registration No. 2,695,014 registered Mar. 11, 2003.
The domain name was registered on August 6, 2001 and acquired by Respondent on September 15, 2020.
DISCUSSION
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 JOINT MAX mark through its registration with the USPTO (e.g., Reg. No. 2,695,014, registered Mar. 11, 2003). Registration of a mark with a national trademark agency is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) (“Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel may find Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s domain name is confusingly similar to Complainant’s JOINT MAX mark because it incorporates Complainant’s mark in its entirety, omitting the spaces between terms in the mark and appending the gTLD “.com.” Under Policy ¶ 4(a)(i), eliminating the space within the mark and appending a gTLD renders the domain name confusingly similar to the mark. See KW KONA INVESTORS, LLC v. Privacy.co.com / Privacy.co.com, Inc Privacy ID# 923815, FA 1784456 (Forum June 11, 2018) (“[T]he omission of spacing and addition of a gTLD are irrelevant in determining whether the disputed domain name is confusingly similar.”); see also Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”); see additionally Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015) (declaring, “Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i).”). Therefore, the Panel may find that the disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
While Respondent contends that the domain name is comprised of common and generic terms and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel may find that such a determination is not necessary under Policy ¶ 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 ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 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 ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel therefore determines the domain name is confusingly similar to JOINT MAX mark per Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
Respondent argues that its use of advertising links on the resolving webpage for the disputed domain name constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). Under Policy ¶ 4(c)(i), a respondent in the business of trading common word domain names is permitted to use the domain names in connection with pay-per-click advertising links. See SOG Specialty Knives and Tools, LLC v. Val Katayev / Poise Media Inc, FA 1726464 (Forum May 23, 2017) (“Speculating in and trading in generic domain names can be a perfectly permissible and bona fide use under the Policy. The Panel finds that Complainant has not met its obligation of proving that Respondent has no legitimate interest in the Domain Name.”); see also McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (holding that “pay-per-click websites are not in and of themselves unlawful or illegitimate”); see additionally Accetta v. Domain Admin, FA 826565 (Forum Jan. 2, 2007) (finding the respondent’s use of the disputed domain name to operate a pay-per-click search engine was a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because the terms of the disputed domain name were of common usage and did not refer to the complainant or its products). Respondent explains that the pay-per-click advertisements were not selected by Respondent but were auto-generated by Google or a parking provider software. Therefore, the Panel may find that Respondent uses the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
Respondent also argues that the terms of the domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields). Respondent contends that it registered the domain name solely because of the combination of the words “joint” and “max” — a common combination that respondent believed no party could claim exclusive rights. See Resp. Ex. 1 at ¶1-4. Respondent also owns many other domain names that include a descriptive word followed by “max.” Id. at ¶6-7. Furthermore, Respondent provides an Internet search screenshot showing various results for the term “jointmax” that do not include Complainant.
Finally, Respondent argues that it has rights and legitimate interests in the disputed domain name as a generic domain name reseller. A business based on investing in domain names does constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i). See GLB Servicos Interativos S.A. v. Ultimate Search, Inc., D2002-0189 (WIPO May 29, 2002) (“Respondent is entitled to conduct a business of capturing generic trademark names which become available in the marketplace – often through failure to renew registration”); see also SOG Specialty Knives and Tools, LLC v. Val Katayev / Poise Media Inc, FA 1726464 (Forum May 23, 2017) (“Speculating in and trading in generic domain names can be a perfectly permissible and bona fide use under the Policy. The Panel finds that Complainant has not met its obligation of proving that Respondent has no legitimate interest in the Domain Name.”); see additionally Platterz Inc. v. Andrew Melcher, FA 1729887 (Forum June 19, 2017) (holding that “investing in genuinely generic terms, for purpose of resale, is a legitimate business and that the acquisition of domain names consisting of common, dictionary terms for resale can confer rights and legitimate interests upon entrepreneurs who engage in this activity”). Respondent lists other common word domain names that it also owns, which include a descriptive word and “max”: ; ; ; ; ; ; ; ; and . See Resp. Ex. 1 at ¶6. Respondent declares that it is reasonable to conclude that Respondent does not target trademarks nor Complainant’s trademark.
Therefore, the Panel concludes that Respondent has rights and legitimate interests in the disputed domain name (Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Since the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(ii), the Panel declines to analyze Policy ¶ 4(a)(iii). Indeed, since Complainant must prove all three elements of Policy ¶ 4(a) under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006); see also Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
DECISION
Having NOT established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.
__________________________________________________
Antonina Pakharenko-Anderson, Panelist
Dated: January 24, 2022
