SkinMedica, Inc. v.
Claim Number: FA0711001112556
Complainant is SkinMedica, Inc. (“Complainant”), represented by Dave
Deonarine, of Wilson Sonsini Goodrich & Rosati, 12235
El Camino Real,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <skinmedica.net>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 26, 2007.
On November 26, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <skinmedica.net> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 27, 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@skinmedica.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
A. Complainant makes the following assertions:
Complainant is a specialty pharmaceutical corporation that develops, acquires, and commercializes products designed to treat dermatologic conditions and diseases and improve the appearance of skin.
Complainant has successfully marketed its products in North
America, South America, Asia, and
Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the SKINMEDICA mark (Reg. No. 2,757,644, issued August 26, 2003), and also currently owns the registration for the <skinmedica.com> domain name.
Respondent registered the <skinmedica.net> domain name on June 17, 2005.
Respondent is not commonly known by the <skinmedica.net> domain name.
Complainant has not authorized or licensed Respondent to use its SKINMEDICA mark.
Respondent’s domain name resolves to a website displaying links to third-party websites that offer pharmaceutical skin products in competition with the business of Complainant.
Respondent has been named in several UDRP decisions in which
the disputed domain names in those cases have been transferred from Respondent
to various complainants; see, for
example C.R. Bard, Inc. & BCR Inc. v.
Respondent’s <skinmedica.net> domain name is identical to Complainant’s SKINMEDICA mark.
Respondent does not have any rights or legitimate interests in the <skinmedica.net> domain name.
Respondent registered and uses the <skinmedica.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of the SKINMEDICA mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Respondent’s <skinmedica.net> domain name is, as alleged, identical to Complainant’s SKINMEDICA mark pursuant to Policy ¶ 4(a)(i), because the disputed domain name includes the entire mark and merely adds the generic top-level domain “.net.” See Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that the domain name <toshiba.net> is identical to a complainant’s TOSHIBA trademark). In particular, inasmuch as a top-level domain is a required element of all domain names, the addition of “.net” is irrelevant. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to a complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel thus finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant has the initial burden of making out a prima facie showing that Respondent lacks rights and legitimate interests in the <skinmedica.net> domain name. The burden then shifts to Respondent to refute that showing. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, the mere assertion by a complainant that a respondent has no right or legitimate interest in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
Complainant has established a prima facie case under the Policy. And, given Respondent’s failure to answer the Complaint, we may presume that Respondent lacks rights and legitimate interests in the disputed domain name. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that a respondent’s failure to produce requested documentation supports a finding for a complainant); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to accept
all reasonable allegations set forth…as true.
Nevertheless, we will examine the evidence of record to
determine if there is any basis for concluding that Respondent has rights or
legitimate interests pursuant to Policy ¶ 4(c).
On this score, we first consider that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <skinmedica.net> domain name. Indeed, the pertinent WHOIS information indicates that Respondent is “Belize Domain WHOIS Service Ltd.,” and there is no additional evidence in the record to suggest otherwise. We also take cognizance of Complainant’s contention, which Respondent does not deny, that Complainant has not authorized or licensed Respondent to use its SKINMEDICA mark. Thus we conclude that Respondent is not commonly known by the <skinmedica.net> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (concluding that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by a mark and never applied for a license or permission from a complainant to use a trademarked name).
We also observe that Respondent’s lack of rights and
legitimate interests in the <skinmedica.net>
domain name is evidenced by the nature of its use. There is no dispute that the domain name here
in issue resolves to a website featuring links to third-party websites in competition
with the business of Complainant. We may
presume that Respondent receives click-through fees from these links. Such use
qualifies as neither a bona fide offering
of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s
diversionary use of a complainant’s marks to send Internet users to a website
displaying links to sites of that complainant’s competitors, was not a bona
fide offering of goods or services); see also Gardens Alive,
Inc. v. D&S Linx, FA 203126 (Nat. Arb.
Forum Nov. 20, 2003) (finding that a respondent used a domain name for
commercial benefit by diverting Internet users to a website selling goods and
services similar to those offered by a complainant, and thus was not using the
name in connection with a bona fide offering of goods or services nor a
legitimate noncommercial or fair use).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
As has already been mentioned, we may presume that Respondent profits from the competing links contained on the website that resolves from the <skinmedica.net> domain name. Respondent is thus taking advantage of the likelihood that Internet users, presumably seeking Complainant’s business, will be confused as to the possible source of the disputed domain name or of Complainant’s affiliation with the corresponding website. This indicates Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark when a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that it is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where a respondent registered and used a domain name confusingly similar to a complainant’s mark to attract users to a website sponsored by that respondent).
In addition, Respondent has also been a respondent in
previous UDRP decisions in which disputed domain names have been transferred
from to their respective complainants. See
C.R. Bard, Inc. & BCR Inc. v.
For these reasons, the Panel thus finds that Policy ¶
4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <skinmedica.net> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 7, 2008
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