Guthy-Renker Corporation v. Marvin Addington
Claim Number: FA0204000109053
Complainant is Guthy-Renker Corporation, Palm Desert, CA (“Complainant”) represented by Daniel M. Cislo, of Cislo & Thomas LLP. Respondent is Marvin Addington, Hemet, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <principalsecrets.com>, registered with VeriSign, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 4, 2002; the Forum received a hard copy of the Complaint on April 8, 2002.
On April 8, 2002, VeriSign, Inc. confirmed by e-mail to the Forum that the domain name <principalsecrets.com> is registered with VeriSign, Inc. and that Respondent is the current registrant of the name. VeriSign, Inc. has verified that Respondent is bound by the VeriSign, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 29, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On May 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.” Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The disputed domain name <principalsecrets.com> is confusingly similar to PRINCIPAL SECRET, a trademark in which Complainant holds rights, as the exclusive licensee of Victoria Principal Productions, Inc.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent did not submit a Response in this proceeding.
Complainant has provided evidence that it acquired exclusive trademark rights in the PRINCIPAL SECRET mark belonging to Victoria Principal Productions, Inc., including the right to bring legal proceedings related to the PRINCIPAL SECRET mark.
The PRINCIPAL SECRET mark was registered on the Principal Register of the United States Patent and Trademark Office on August 31, 1993 as Reg. No. 1,790,913 in association with skin and body care products. Complainant and/or its assignor have continuously used the mark in commerce since at least 1991. Complainant also holds the rights to three other registered trademarks incorporating the words PRINCIPAL SECRET.
Complainant provides information related to its PRINCIPAL SECRET products at its websites located at <principalsecret.com> and <guthy-renker.com>.
Respondent registered the disputed domain name on May 8, 2001 and has used the domain name to redirect its viewers to <dietsupplement.com>, a website that offers for sale diet supplements that will purportedly improve one’s appearance.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark 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.
Identical and/or Confusingly Similar
Complainant has established its rights in the PRINCIPAL SECRET mark through its assignor’s registration with the U.S. Patent and Trademark Office and continuous subsequent use. The disputed domain name is confusingly similar to Complainant’s mark as it merely adds the letter “s” to the mark along with the generic top level domain (“gTLD”) “.com.”
The addition of a letter to a mark does not distinguish a domain name from the mark to defeat a claim of confusing similarity. See Blue Cross & Blue Shield Ass’n v. InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding that a domain name which merely adds the letter ‘s’ to Complainant’s mark is sufficiently similar to the mark to cause a likelihood of confusion among the users of the Complainant’s services and those who were to view a web site provided by the Respondent accessed through the contested domain name); see also Nat’l Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s NATIONAL GEOGRAPHIC mark).
Similarly, the use of a gTLD does not distinguish the domain name from the mark as the top level domain is a required element in domain names. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has demonstrated its rights to and interests in its marks. Because Respondent has not submitted a Response in this matter, the Panel may presume it holds no such rights or interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Further, the fact that Respondent chose not to respond allows the Panel to draw all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Respondent has not made any use of the disputed domain name except to redirect Internet users to a website offering dietary supplement products for sale. Having held registration of the domain name for approximately one year, such conduct indicates that Respondent does not have rights or interests in the domain name; rather, Respondent likely registered the domain name to ensnare unsuspecting Internet users seeking Complainant’s website to its own website. Such behavior does not amount to a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
There is no evidence to suggest that Respondent is commonly known as “principalsecrets” or <principalsecrets.com> to establish rights under Policy ¶ 4(c)(ii); Respondent is only known to this Panel as Marvin Addington. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
Further, Respondent’s use of the disputed domain name to redirect Internet users seeking Complainant’s products to a different commercial website is not a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and, thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent registered and used the disputed domain name, which is nearly identical to Complainant’s registered trademark, in order to attract, for commercial gain, Internet users to Respondent’s <dietsupplement.com> website by creating confusion as to the source or affiliation of its website. Such behavior demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <principalsecrets.com> domain name be transferred from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 22, 2002
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