Klein-Becker IP Holdings, LLC v. Andrew Scherer
Claim Number: FA0801001126329
Complainant is Klein-Becker IP Holdings, LLC (“Complainant”), represented by Stephen
H. Bean, of Basic Research, LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <discountstrivectin.com>, registered with Enom, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 4, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 8, 2008.
On January 7, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <discountstrivectin.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 January 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 4, 2008 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@discountstrivectin.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 12, 2008, 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 licenses the use of several of its trademarks to
Licensee produces several topical preparations, including StriVectin-SD, StriVectin-SD Eye Cream, StriVectin-HS, and others.
Licensee operates under the STRIVECTIN mark, which was registered by Complainant with the United States Patent and Trademark Office (“USPTO”) on November 26, 2006 (Reg. No. 3,175,013).
Products bearing the STRIVECTIN mark are sold in retail stores and on a website corresponding to the <strivectin.com> domain name, which is owned by Licensee.
Respondent registered the <discountstrivectin.com> domain name on August 19, 2007.
Respondent uses the disputed domain name to resolve to a website that provides information and links to third-party distributors of Complainant’s products.
Respondent’s <discountstrivectin.com> domain name is confusingly similar to Complainant’s STRIVECTIN mark.
Respondent does not have any rights or legitimate interests in the domain name <discountstrivectin.com>.
Respondent registered and uses the <discountstrivectin.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar 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 has established rights in the STRIVECTIN mark under
Policy ¶ 4(a)(i) through registration of the mark with
the USPTO. 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 <discountstrivectin.com> domain name incorporates Complainant’s entire STRIVECTIN mark while merely adding the generic word “discount,” as well the generic top-level domain “.com.” Generic top-level domains are irrelevant for purposes of a Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t
is a well established principle that generic top-level domains are irrelevant
when conducting a Policy ¶ 4(a)(i) analysis.
Furthermore,
the addition of a generic word to a mark fails to render a disputed domain name
sufficiently distinct to avoid a finding of confusing similarity under Policy ¶
4(a)(i). Therefore, we conclude that the
disputed domain name is confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Westfield
Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the
<westfieldshopping.com> domain name confusingly similar to the
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the <discountstrivectin.com> domain name. Once Complainant has established a prima facie case, the burden shifts to Respondent to prove that it does have such rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights to or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
From an examination of the record, we conclude that Complainant has made out a prima facie case for purposes of the Policy. Because Respondent has failed to respond to the Complaint, we are free to conclude that Respondent has no rights to or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts
to Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
We will nonetheless examine the record to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the domain name under the terms of Policy ¶ 4(c).
We begin by noting that it is undisputed that Respondent’s <discountstrivectin.com> domain name resolves to a
website that provides information about and links to third-party distributors
of Complainant’s products. Such use does
not constitute a bona fide offering of goods or services under
Policy ¶ 4(c)(i), or a legitimate noncommercial use under Policy ¶ 4(c)(iii). See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb.
Forum May 12, 2003) (finding that a respondent did not have rights to or
legitimate interests in a domain name that used a complainant’s mark and
redirected Internet users to a website that pays domain name registrants for
referring those users to its search engine and pop-up advertisements).
We also observe that there is no evidence in the record,
including in the pertinent WHOIS domain name registration information, to suggest
that Respondent is, or ever has been, commonly known by the <discountstrivectin.com> domain name. Therefore, we conclude that Respondent lacks
rights and legitimate interests in the disputed domain name pursuant to Policy
¶ 4(c)(ii). See Am. W. Airlines, Inc. v.
Paik, FA 206396 (Nat. Arb. Forum
Dec. 22, 2003): (“Respondent has registered the domain name under the
name ‘Ilyoup Paik a/k/a David Sanders.’
Given the WHOIS domain name registration information, Respondent is not
commonly known by the [<awvacations.com>] domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) a respondent is not a licensee of a
complainant; (2) that complainant’s prior rights in the domain name precede that
respondent’s registration; (3) that respondent is not commonly known by the
domain name there in question).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
We have already taken
cognizance of the fact that Respondent’s domain name resolves to a website that provides links to
third-party distributors of Complainant’s products, and that Respondent’s
website provides information regarding those products. It is therefore likely that an Internet user
seeking Complainant’s products would be diverted to Respondent’s website. Respondent has thus created a likelihood of
confusion regarding the possible source, endorsement or affiliation of the
disputed domain name and the corresponding website. In addition, Respondent evidently profits
from such activity through the receipt of referral fees from the advertisers
listed on its website. Respondent has therefore
engaged in bad faith registration and use of the disputed domain name pursuant
to Policy ¶ 4(b)(iv). See
Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb.
Forum Aug. 21, 2000) (finding bad faith where a respondent directed Internet
users seeking a complainant’s site to its own website for commercial gain).
In addition, it appears that Respondent registered the <discountstrivectin.com> domain name with at least constructive knowledge of
Complainant’s rights in the STRIVECTIN trademark by virtue of Complainant’s prior
registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly
similar domain name despite such constructive knowledge is, without more,
evidence of bad faith registration and use of the domain name pursuant to
Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
For these reasons, the Panel 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 <discountstrivectin.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 22, 2008
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