Mondo-Mer, Inc. v. Tudor
Princess
Claim Number: FA0711001111829
PARTIES
Complainant is Mondo-Mer, Inc. (“Complainant”), represented by Richard
S. Mandel, of Cowan, Liebowitz & Latman, P.C., 1133
Avenue of the
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rejuvenex.com>, registered with Network
Solutions, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Judge
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 19, 2007; the
National Arbitration Forum received a hard copy of the Complaint on November 21, 2007.
On November 19, 2007, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <rejuvenex.com>
domain name is registered with Network
Solutions, Inc. and that the Respondent is the current registrant of the
name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 November 26, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 17, 2007 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 postmaster@rejuvenex.com by
e-mail.
A timely Response was received and determined to be complete on November 28, 2007.
Complainant’s timely Additional Submission was received and determined
to be complete on November 29, 2007.
Respondent’s timely Additional Submission was received and determined
to be complete on November 29, 2007.
The Additional Submissions were read and considered by the Panelist.
On December 5, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Judge
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Complainant has
established rights in the REJUVENEX mark through registration with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 1,975,771 – issued May
28, 1996) used since 1983.
2. The disputed domain
name is confusingly similar to Complainant’s mark, and, in fact, it is
identical.
3. Respondent does not
have rights or a legitimate interest in the disputed domain name because
Respondent is not commonly known by the <rejuvenex.com> domain name, as
Respondent registered the domain name under the name “Tudor Princess.” Moreover, Respondent admits that it chose to
do business under the name “Skin Quest.”
Additionally, Complainant contends that due to the fanciful nature of
its mark and long history of use, it is not possible for Respondent to be
commonly known by the <rejuvenex.com> domain name.
4. Respondent does not
have rights or a legitimate interest in the disputed domain name because
Respondent is using the disputed domain, which is confusingly similar to
Complainant’s REJUVENEX mark, to operate a website containing commercial links
offering a variety of competing cosmetic and skin care products for sale to the
public.
5. Respondent does not have
rights or a legitimate interest in the disputed domain name because
Respondent’s offer to sell the <rejuvenex.com> domain name is evidence of
Respondent’s lack of any rights or legitimate interest in the disputed domain
name.
6. Respondent registered and
is using the disputed domain name in bad faith because some of the links
featured on Respondent’s resultant website operate in direct competition with
Complainant’s cosmetic and skin care products.
The Panel may infer that Respondent is profiting from such use through
the collection of referral fees for each redirected Internet user.
7. Respondent registered
and is using the disputed domain name in bad faith because Respondent chose a
domain name identical to Complainant’s REJUVENEX mark to capitalize on the fame
and good will associated with the mark.
Respondent’s actual or constructive knowledge of Complainant’s REJUVENEX
at the time of registration of the domain names is evidence of bad faith.
B. Respondent
1. Respondent had a
legitimate interest in registering the disputed domain name in 1999 to reflect
a possible name for its business.
2. Complainant failed to
carry its required burden of proof of bad faith registration and use.
3. The disputed domain
name was not registered with the intent to profit from Complainant’s mark.
4. Respondent was unaware
of Complainant’s mark at the time Respondent registered the
<rejuvenex.com> domain name.
5. The links generated on
the disputed website were because of the action of the registrar without
Respondent’s consent or knowledge.
C. Complainant’s Additional Submission
1. Respondent is
responsible for his website and cannot shift blame to the registrar.
2. It is more than the use
of the disputed domain to link to competing websites that evidences bad faith. Bad faith also may be inferred from (a)
Respondent’s registration of the disputed domain name <rejuvenex.com>
despite Complainant’s pre-existing federal registration protecting the
REJUVENEX mark; (b) the inactivity of the domain name over a period of years
following Respondent’s registration; and (c) Respondent’s attempt to sell the
domain name for profit.
D. Respondent’s Additional Submission
1. Complainant is not
following common industry practices by not purchasing the disputed domain name.
2. There has been no bad
faith. Respondent purchased the disputed
domain name in good faith with the intent of having it as an option for a new
business. Complainant subsequently decided
to get into the web-based business (9 months after Respondent) and should
simply purchase the disputed domain name.
FINDINGS AND DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 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;
(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.
In the Panelist’s opinion, there is no need
here for extended analysis.
First, the disputed domain name is
confusingly similar to Complainant’s mark.
In fact, it is identical. The first
element is established.
Second, Respondent is using the disputed domain name
to operate a website containing
commercial links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v.
Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that the respondent’s diversionary use of the complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to the complainant’s competitors, was not a bona fide
offering of goods or services).
Moreover, the Respondent is not commonly known by the <rejuvenex.com> domain name as Respondent registered the domain name under the name “Tudor Princess” and chose to do business under the name “Skin Quest.” See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark). The second element is established.
Third, and apart from any other reason,
Respondent had at least constructive knowledge, if not actual knowledge, of the
REJUVENEX mark at the time the disputed domain name was registered by virtue of
Complainant’s
This case demonstrates the axiomatic advice
given to those seeking to register a domain name, i.e., always do a trademark
search first. The third element is
established.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rejuvenex.com> domain name be TRANSFERRED
from Respondent to Complainant.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: December 19, 2007
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