Mystic Tan, Inc. v. Darque Immersion
Claim Number: FA0712001117492
Complainant is Mystic Tan, Inc. (“Complainant”), represented by Darin
Klemchuk, 8150 North Central Expressway, Suite 1575, Dallas, TX 75206.
Respondent is Darque Immersion (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <freemystictan.com>, registered with Godaddy.com, 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 electronically on December 4, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 6, 2007.
On December 5, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <freemystictan.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 December 11, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 31, 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@freemystictan.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 3, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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:
1. Respondent’s <freemystictan.com> domain name is confusingly similar to Complainant’s MYSTIC TAN mark.
2. Respondent does not have any rights or legitimate interests in the <freemystictan.com> domain name.
3. Respondent registered and used the <freemystictan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mystic Tan, Inc., is in the business of selling tanning booths, and offering tanning products and services. Complainant has used its MYSTIC TAN mark in business since 1998 and registered the MYSTIC TAN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,788,486 issued December 2, 2003).
Respondent registered the <freemystictan.com> domain name on November 7, 2005. The disputed domain currently resolves to a website emulating a website of Complainant’s by including a quote from Complainant’s CEO as well as containing Complainant’s logo in an attempt to get personal information from Complainant’s customers.
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 the 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant registered the MYSTIC TAN mark with the USPTO,
and therefore, established rights to the mark pursuant to Policy ¶ 4(a)(i). See McCarthy
on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The
ICANN dispute resolution policy is “broad in scope” in that “the reference to a
trademark or service mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights will suffice” to support a domain name
complaint under the Policy); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum
Complainant contends that the <freemystictan.com> domain name is confusingly similar to
the MYSTIC TAN mark. Respondent’s
addition of the generic term “free” to the registered mark is insufficient to
distinguish the disputed domain name from the registered mark. In addition, because all domain names are
required to have a top-level domain, Respondent’s use of the generic top-level
domain (“gTLD”) “.com” does not distinguish the disputed domain name from
Complainant’s registered mark.
Therefore, the Panel finds that the <freemystictan.com>
domain name is confusingly similar to Complainant’s MYSTIC TAN mark pursuant to
Policy ¶ 4(a)(i).
See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to the complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not
relevant); see also Am. Online, Inc. v. iDomainNames.com,
FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain
name <go2AOL.com> was confusingly similar to the complainant’s AOL mark);
see also Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant claims that Respondent has neither rights nor
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant
has the initial burden of showing the Respondent does not have rights or
legitimate interests in the disputed domain name. Once Complainant has made a prima facie showing, the burden shifts
to Respondent to show that it does have rights or legitimate interests in the <freemystictan.com> domain name. The Panel finds that Complainant has met the
initial burden of showing that Respondent lacks rights and legitimate
interests, and therefore has made a prima
facie case under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO
Because Respondent failed to answer the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, the Panel will examine all evidence in the record to determine if Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent has never been
authorized to use the MYSTIC TAN mark, and that Respondent is not and has never
been commonly known by the disputed domain name. Further, the WHOIS information does not
indicate that Respondent is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not
commonly known by the <freemystictan.com>
domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
The disputed domain name currently resolves to a website
emulating a website of Complainant by including a quote from Complainant’s CEO
as well as containing Complainant’s logo. Respondent attempts to trap e-mail addresses
and other information from Internet users by passing itself off as Complainant.
The Panel finds that such use is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii). See HOPE
worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004)
(finding that a domain name that “is confusingly similar to Complainant’s mark,
redirects Internet users to a website that imitates Complainant’s website, and
is used to acquire personal information from Complainant’s potential associates
fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or
(iii)); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither
a bona fide offerings [sic] of goods or services, nor an example of a
legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when
the holder of a domain name, confusingly similar to a registered mark, attempts
to profit by passing itself off as Complainant . . . .”).
The Panel finds that Policy 4(a)(ii)
has been satisfied.
Respondent’s use of <freemystictan.com> domain name, which is confusingly similar to Complainant’s MYSTIC TAN trademark, is likely to cause confusion to customers searching for Complainant’s goods and services. There may be confusion regarding Complainant’s affiliation, endorsement, or sponsorship of Respondent’s website. The Panel can assume Respondent is commercially benefiting from this confusion. Based on the findings, the Panel concludes the use of the <freemystictan.com> domain name constitutes bad faith under Policy ¶ 4(b)(iv). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).
Respondent’s disputed domain name directs to a website asking
Internet users to enter personal information including e-mail addresses. The Panel presumes this information is used
in a phishing scheme for Respondent’s own commercial gain. The Panel finds that such use is evidence of
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Juno Online Servs.,
Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that
using a domain name that “is confusingly similar to Complainant’s mark,
redirects Internet users to a website that imitates Complainant’s billing
website, and is used to fraudulently acquire personal information from
Complainant’s clients” is evidence of bad faith registration and use); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use
because the respondent used the domain name to redirect Internet users to a
website that imitated the complainant’s website and to fraudulently acquire
personal information from the complainant’s clients).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <freemystictan.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 11, 2007
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