Dermalogica, Inc. and The International Dermal Institute, Inc. v. Andrew Porter and Zen Day Spa
Claim Number: FA0803001155710
Complainant is Dermalogica, Inc. and The International Dermal
Institute, Inc. (collectively, “Complainant”), represented by David J. Steele, of Christie, Parker & Hale LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <shopdermalogica.com>, registered with Schlund+Partner Ag.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 31, 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@shopdermalogica.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <shopdermalogica.com> domain name is confusingly similar to Complainant’s DERMALOGICA mark.
2. Respondent does not have any rights or legitimate interests in the <shopdermalogica.com> domain name.
3. Respondent registered and used the <shopdermalogica.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
The International Dermal Institute, Inc. and its licensee
Dermalogica, Inc., hereinafter “Complainant,” markets skin care products under
its DERMALOGICA mark. Complainant has
registered its DERMALOGICA mark with multiple governmental authorities. Complainant provided evidence of the
registration of its DERMALOGICA mark with the United Kingdom Intellectual
Property Office (“UKIPO”) on
Respondent registered the <shopdermalogica.com>
domain name on
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 has produced evidence of the registration of its DERMALOGICA mark with the UKIPO. The Panel finds this is sufficient to establish Complainant’s rights in its DERMALOGICA mark pursuant to Policy ¶ 4(a)(i). See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Respondent’s <shopdermalogica.com>
domain name contains Complainant’s DERMALOGICA mark in its entirety with the
addition of the generic term “shop.” The
addition of a generic term does not distinguish the dominant element of the
domain name, which is Complainant’s DERMALOGICA mark. Additionally, the generic top-level domain
(“gTLD”) “.com” is not relevant in determining whether a disputed domain name
is confusingly similar to a mark because a gTLD is a required part of every
domain name. Therefore the Panel finds
Respondent’s <shopdermalogica.com>
domain name is confusingly similar to Complainant’s DERMALOGICA mark pursuant
to Policy ¶ 4(a)(i).
See Arthur Guinness Son
& Co. (
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate
interests in the disputed domain name.
Complainant is required to produce a prima
facie case in support of its allegations and then the burden shifts to
Respondent to prove it possesses rights or legitimate interests in the disputed
domain name. The Panel finds Complainant
has adequately established a prima facie
case. Due to Respondent’s failure to
respond to these proceedings, the Panel assumes Respondent does not possess
rights or legitimate interests in the disputed domain name. The Panel will nevertheless examine the
record to determine whether Respondent possesses rights or legitimate interest
in the disputed domain name pursuant to Policy ¶ 4(c). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Respondent’s <shopdermalogica.com>
domain name resolves to a website which offers domain registration
services. This is evidence Respondent is
using its disputed domain name to divert Internet users looking for Complainant’s
goods to an unrelated commercial website.
Respondent presumably receives compensation for diverting Internet users
to the website resolving from its disputed domain name. The Panel finds this is not a use in
connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i), or
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona
fide offering of goods or services under Policy ¶ 4(c)(i),
nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc.
v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the
respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy).
Respondent does not appear to be commonly known by the <shopdermalogica.com> domain name. The WHOIS information lists Respondent as “Andrew Porter” of “Zen Day Spa.” The record indicates Complainant has not authorized Respondent to utilize its DERMALOGICA mark. Therefore, the Panel finds Respondent is not commonly known by the <shopdermalogica.com> domain name pursuant to Policy ¶ 4(c)(ii). See Michael Smith Custom Clothiers, Inc. v. Custom Shirt Shop, FA 1109402 (Nat. Arb. Forum Jan. 4, 2008) (“[O]ther ICANN panels have held, and this Panel agrees, that in order to have rights or legitimate interests under the “commonly known” provision of the Policy a respondent must be commonly known by the domain name prior to registration of the domain name in issue.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the website resolving from its confusingly
similar disputed domain name to promote domain registration services. Respondent presumably receives compensation
for this use. Respondent’s use of
Complainant’s DERMALOGICA mark creates a likelihood of confusion regarding the
source of the content resolving from the disputed domain name. The Panel also finds this is an attempt by
Respondent to profit from the goodwill associated with Complainant’s mark. Therefore, the Panel finds Respondent has registered
and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp. v.
The Panel finds 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 <shopdermalogica.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 14, 2008
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