Dermalogica, Inc. and The International Dermal Institute, Inc. v. DermLogica
Claim Number: FA0802001153928
Complainant is Dermalogica, Inc. and The International Dermal
Institute, Inc. (collectively, “Complainant”), represented by David J. Steele, of Christie, Parker & Hale, LLP, California, USA. Respondent is DermLogica (“Respondent”), Virginia,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dermlogica.com>, registered with Namesdirect.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 27, 2008.
On February 27, 2008, Namesdirect confirmed by e-mail to the National Arbitration Forum that the <dermlogica.com> domain name is registered with Namesdirect and that Respondent is the current registrant of the name. Namesdirect has verified that Respondent is bound by the Namesdirect 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 March 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 24, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 1 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <dermlogica.com> domain name is confusingly similar to Complainant’s DERMALOGICA mark.
2. Respondent does not have any rights or legitimate interests in the <dermlogica.com> domain name.
3. Respondent registered and used the <dermlogica.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dermalogica, Inc. and its parent company, The
International Dermal Institute, Inc., have used the DERMALOGICA mark for over
twenty years to identify and market their line of skin care products. Complainant markets its products all over the
world, with more than 3,500 sellers of Complainant’s products in the
Respondent registered the <dermlogica.com> domain name on June 28, 2005. The disputed domain name resolves to a website displaying information about Complainant’s products and hyperlinks to websites in direct competition with Complainant.
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 holds a trademark registration for the
DERMALOGICA mark with the USPTO. The
Panel finds that this registration adequately establishes Complainant’s rights
in the mark for the purposes of Policy ¶ 4(a)(i).
Complainant contends that the <dermlogica.com>
domain name is confusingly similar to its mark as the disputed domain name
contains a misspelled version of its DERMALOGICA mark, omitting the letter “a”
from the middle of the mark, and adding the generic top-level domain (“gTLD”)
“.com.” The Panel agrees with Complainant’s
assertions, finding that these alterations to Complainant’s mark do not
sufficiently distinguish the disputed domain name from Complainant’s mark under
Policy ¶ 4(a)(i).
See State Farm Mut. Auto. Ins. Co. v. Try Harder &
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has the burden of presenting a prima facie case that Respondent lacks rights and legitimate interests in the <dermlogica.com> domain name. Once Complainant satisfies its burden, as the Panel determines Complainant to have done here, the burden shifts to Respondent to present evidence it has rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also 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).”).
Upon an examination of the record, the Panel finds no evidence that Respondent is or ever has been commonly known by the <dermlogica.com> domain name, or that Complainant has authorized Respondent to use its mark. Ergo, Respondent can not establish that it is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also 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 <dermlogica.com> domain name resolves to a website that displays information on Complainant and its products, while also displaying hyperlinks to various websites of Complainant’s competitors. The Panel finds that such use by Respondent is 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Use of the <dermlogica.com> domain name to display information on Complainant’s products while advertising hyperlinks to Complainant’s competitors, constitutes a disruption of Complainant’s business and evidences bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel also finds that Respondent is operating the website that resolves from the <dermlogica.com> domain name to commercially benefit from click-through fees when an Internet user selects a hyperlink displayed on the website. Moreover, the disputed domain name and corresponding website are capable of creating a likelihood of confusion as to Complainant’s source, sponsorship, affiliation or endorsement of the <dermlogica.com> domain name and resulting website, particularly since the website displays evidence on Complainant’s products. The Panel finds that such use is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
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 <dermlogica.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: April 14, 2008
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