NAF panelist orders transfer of Uniprotein.com, finds that ‘uniprotein’ is confusingly similar to a design mark on ‘universal’

A NAF panelist orders the transfer of uniprotein.com after making a dubious finding that the domain ‘uniprotein.com’ is confusingly similar to a design mark for ‘universal’ that incorporates an image of  a bodybuilder flexing his muscles.

Universal Design Mark

Universal Nutrition sells body building supplies with a specialty in protein supplements.

‘Universal’ is of course a generic term with a wide range of commercial uses.  A search of the USPTO for live registrations for ‘universal’ produces over 1,000 results.

My understanding is that a design mark protects the design, not the related word.  If a company wants to protect a word, then they should apply for a word mark.

The panelist’s analysis is as follows:

Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that the <uniprotein.com> domain name is, as alleged in the Complaint, an amalgamation of a common abbreviation of Complainant’s UNIVERSAL trademark and the term “protein,” which describes an aspect of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.”   The combination is confusingly similar to Complainant’s mark.  See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003): (“Notwith-standing the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ connotes ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”);  see also Micro-soft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the do-main name <ms-office-2000.com> to be confusingly similar to the MICROSOFT mark even though the mark was abbreviated in the domain name).

The panelist’s analysis is that ‘uniprotein’ is similar to ‘universal’ in the same way that ‘modprops’ is similar to ‘modern props’.  The difference of course is that ‘modern props’ is a combination word that contains the second term in the phrase, while ‘universal’ is simply one word.

It is a stretch to say that anyone seeing the domain ‘uniprotein’ would think of the word ‘universal’.  It is a further stretch to say that even if a consumer found ‘uniprotein’ confusingly similar to ‘universal’ that it would be confused with the Complainant’s use of ‘universal’ rather than the thousand other commercial uses.  It is yet a further stretch to make that finding because the Respondent is based in India and is targeting the Indian market, while the Complainant is a U.S. company.  And it is still yet a further stretch to find that the domain ‘uniprotein.com’ which has no design elements is confusingly similar to a design mark whose most prominent feature is a bodybuilder.

These are the contortions that the NAF panelist had to go through to meet the first ‘confusingly’ similar test of the UDRP.

To meet the second test that the domain owner was not making a legitimate use of the domain, the panelist makes the dubious finding that the Respondent’s use of the uniprotein.com domain for an active web site that sells a wide range of protein supplements is not a legitimate use.

The respondent is based in India, and nothing in the decision would indicate that the Complainant has any trademark rights in India that would prevent the Respondent from selling protein supplements under the uniprotein.com name.

Ironically, the panelist uses as evidence against the Respondent that its name in the Whois – “Universal Nutrition” – is not the same as its domain name:

 Moreover, the pertinent WHOIS record identifies the registrant of the domain name only as “Universal Nutrition,” which is not the same as the domain name.

The panelist is apparently oblivious to the fact that he just made a finding that ‘uniprotein’ is confusingly similar to a design mark on ‘universal’ so you’d think he would find ‘Universal Nutrition’ to be sufficiently similar to ‘uniprotein.com’ that he wouldn’t penalize the Respondent for owning uniprotein.com under the name of a company called ‘Universal Nutrition’.

The Respondent didn’t help themselves by failing to respond to the Complaint.  My sense is that Panelists often treat a ‘no response’ as giving them free reign to order a domain transfer for the flimsiest of reasons.

But the ends shouldn’t justify the means, especially if the means are to trample over the requirements of the UDRP and the principles of trademark law.

Andrew Allemann just posted about another similar case, where a Panelist found that Thompson Island Outward Bound Education Center is confusingly similar to “Thompson Island”-

That is a more difficult question than Complainant makes it out to be. Complainant has produced evidence sufficient (at least in the absence of contrary proof) to show common law rights in its corporate name, Thompson Island Outward Bound Education Center. That of course, is not the same as rights in Thompson Island standing alone. Thompson Island is a geographic location and by itself is not indicative of any goods or services provided by Complainant or anyone else.

Complainant argues that its prior use of the disputed domain name – stripped of its gTLD, Thompson Island standing alone – gives it rights in the phrase. The Panel agrees, though upon slightly different grounds than those offered by Complainant. First and most importantly, the audience likely to be misled should Respondent make a different use of the disputed domain name has for almost a decade identified “Thompson Island” with Complainant; that is the means Internet users seeking information about Complainant have accessed it on their computers. Second, Thompson Island may be said to be the dominant feature of Complainant’s full name. Its use without the other four words may – and on Complainant’s evidence is found to be – acceptable ellipsis. Complainant has met its burden of proof under this Policy head.

In this case, the well-respected panelist acknowledges that it is quite a stretch to find that “Thompson Island” is confusingly similar to “Thompson Island Outward Bound Education Center”, but he makes the stretch nonetheless, perhaps persuaded that the end – returning a domain claimed as stolen – is worth stretching the provisions of the UDRP to the breaking point and perhaps beyond.