Mondo-Mer, Inc. v. Tudor Princess
Claim Number: FA0711001111829
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.
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.
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 email@example.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
Complainant requests that the domain name be transferred from Respondent to 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.
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
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.
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
Dated: December 19, 2007
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