California Cosmetics, Inc. v. Clients of NoKiAHOST.COM
Claim Number: FA0804001174473
Complainant is California Cosmetics, Inc. (“Complainant”), represented by Malcolm
Wittenberg, of Dergosits & Noah LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <silkskinbc.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregis.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On April 3, 2008, Direct Information Pvt Ltd d/b/a Publicdomainregis confirmed by e-mail to the National Arbitration Forum that the <silkskinbc.com> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregis and that Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregis has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregis 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").
10, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 30, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <silkskinbc.com> domain name is confusingly similar to Complainant’s SILKSKIN mark.
2. Respondent does not have any rights or legitimate interests in the <silkskinbc.com> domain name.
3. Respondent registered and used the <silkskinbc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, California Cosmetics, Inc.,
is a leading producer of skin care products.
Complainant uses its SILKSKIN mark in association with the production
and sales of its various skin care products.
Complainant owns several trademark registrations with the United State
Patent and Trademark Office (“USPTO”) for the SILKSKIN mark (i.e. Reg. No.
Respondent registered the <silkskinbc.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 established rights in the SILKSKIN mark
through registration with the USPTO pursuant to Policy ¶ 4(a)(i). See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
Complainant alleges that Respondent’s <silkskinbc.com> domain name is confusingly
similar to Complainant’s SILKSKIN mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s mark in its entirety and adds the letters “bc,” which could
easily be interpreted as an abbreviated version of the terms “beauty care,” thereby
describing the Complainant’s line of business.
The Panel finds that, pursuant to Policy ¶ 4(a)(i), the addition of an
abbreviated version of words describing a complainant’s business fails to
distinguish a disputed domain name from a complainant’s mark, and is therefore
confusingly similar. See Space Imaging LLC v.
Brownell, AF-0298 (eResolution
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <silkskinbc.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds in this case that Complainant has established a prima facie case. 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).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See 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); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). However, the Panel chooses to examine the evidence on record against the applicable Policy ¶ 4(c) elements before making a final determination with regards to Respondent’s rights and legitimate interests.
Complainant contends that Respondent is neither commonly
known by the <silkskinbc.com>
domain name nor licensed to register domain names using the SILKSKIN mark. Respondent’s WHOIS information identifies
Respondent as “Clients of Nokiahost.com,” and lacks defining characteristics
relating it to the disputed domain name.
Therefore, pursuant to Policy ¶ 4(c)(ii), the Panel
finds that Respondent lacks all rights and legitimate interests in the disputed
domain name. See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum
Complainant asserts that Respondent is using the <silkskinbc.com> domain name in order to intentionally divert Internet users to the associated website, where products in direct competition with Complainant are displayed for sale. The Panel finds that such use is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding no rights or legitimate interests where “Respondent initially used the domain name at issue to resolve to a website where educational services were offered to the same market as that served by Complainant and only altered that use following a complaint by Complainant”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <silkskinbc.com> domain name to compete with Complainant is evidence of bad faith. The Panel finds that a registered domain name used primarily to disrupt the business prospects of a competitor is a demonstration of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
In addition, Respondent’s use of the <silkskinbc.com> domain name in order to attract unknowing Internet users and offer competiting products is further evidence of bad faith registration and use. The Panel finds that the registration of a confusingly similar domain name for the purpose of diverting Internet users, resulting in commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
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 <silkskinbc.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: May 13, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum