California Cosmetics, Inc. v. Prakash Melwani
Claim Number: FA0804001174492
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 <silkskin.us>, 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.
Fernando Triana, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 2, 2008; the Forum received a hard copy of the Complaint on April 4, 2008.
On April 2, 2008, Godaddy.com, Inc. confirmed by e-mail to the Forum that the <silkskin.us> domain name is registered with Godaddy.com, Inc. and that the 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 the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 5, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
On May 9, 2008, the National Arbitration Forum granted Respondent’s request to extend the date by which a timely Response could be filed, extending the deadline to May 27, 2008.
A timely Response was received electronically on May 27, 2008. The Response was deficient under usDRP Rule 5(b) as the hard copy of the Response was not timely received, since the same arrived on May 29, 2008.
On June 6, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant contends in the Complaint that it is the owner of the following federally registered trademarks:
application filed on February 29, 1988 with the number 73/714,048 and granted
on June 25, 1991 with the
application filed on November 17, 1997 with the number 75/391,368 and granted
on December 14, 1999 with the
SILKSKIN FOR MEN,
application filed on May 31, 1988 with the number 73/731,560 and granted on
June 25, 1991 with the
The Complainant also established that the Respondent registered the domain name “<silkskin.us>, imitating Complainant’s trademarks, as the only difference is the ccTLDs “.us.”
The domain name <silkskin.us> was registered and is being used in bad faith by the Respondent, due to the similarity with the Complainant’s trademarks and domain name silkskin.com. Thus, Respondent has intentionally confused the Internet users leading them to believe that both are related, taking advantage of the prestige of the Complainant’s trademarks.
Based on the above, Respondent uses the domain name in bad faith and for gain purposes, as the latter sells goods that are not associated with Complainant creating a likelihood of confusion with the Complainant’s trademarks.
Bearing in mind that on May 9, 2008, the National Arbitration Forum extended the date of filing the Response to May 27, 2008 and Respondent submitted the same in electronic form on said date, this Panel accepts it. This, as the decision of the Panel is not based on technical requirements but on the arguments of the parties involved. See Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002); see also Bank of Am. Corp. v. NW Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003).
The Respondent contends in the Response that:
The registrations of the trademarks SILKSKIN, SILKSKIN ULTRA and SILKSKIN FOR MEN were obtained by filing fraudulent information before the United States Patent and Trademark Office (USPTO).
Respondent argued that the domain name <silkskin.us> is not similar to the mark SILKSKIN. Furthermore, the Complainant has no exclusive rights over the mark SILKSKIN and its marks are not registered to identify clothing goods, textiles and/or any other that is not included in the certificate of registration.
Respondent also stated that it has legitimate interests in the term SILKSKIN in connection with silk clothing goods and textiles.
The Respondent pointed out that there exist eleven (11) domain names based on the expression “silkskin” registered by third parties different from the Complainant.
As the Respondent does not have in its website any good related or included in the Complainant’s certifications of registration, there is no possible to confuse the Internet users. Additionally, there is no other link on the Internet that can access the domain name <silkskin.us>, since the users have to type exactly the address of the disputed domain name.
Complainant does not have evidence of the confusion between <silkskin.us> and its trademarks. Moreover, any use of the expression SILKSKIN is fair, as it is employed by silk fabrics, for silk clothing and/or accessories and/or goods made by silk.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the following three circumstances are given in this case in order to obtain the transfer of the domain name:
(A) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(B) that the Respondent does not have rights or legitimate interests in respect of the domain name; and
(C) that the domain name has been registered and is being used by the Respondent in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
The first element required by the Policy is that the domain name and SILKSKIN, SILKSKIN ULTRA and SILKSKIN FOR MEN trademarks owned by the Complainant are identical or confusingly similar.
The Complainant filed as evidence simple copies of the certificates No. 1,648,615, 1,648,614 and 2,300,593, where it is read that the trademarks SILKSKIN, SILKSKIN ULTRA and SILKSKIN FOR MEN are duly registered and in force. It is also included the first use of them and the goods that they identify, which are all connected to cosmetics and skin care in general according to the International Class 3.
On the other hand, the Respondent set forth that eventhough it recognized the existence of the above registrations, the same are not valid.
In this regard, it is important to take into account
that the certifications filed by the Complainant are public documents issued by
the USPTO, and thus its legitimacy are presumed and an ICANN Panel is not empowered to
decide on the issue of whether or not the same were fraudulently registered. Therefore, this administrative proceeding is not the
scenario to attack their legality. See
Additionally, the Respondent did not enclosed with its response any evidence or prove that lead the Panel to assume that the Complainant committed fraud with its applications.
Therefore, the only duty of the Panel is to analyze under the paragraph 4(a)(i) of the Policy whether or not the Complainant has a trademark, and if the disputed domain name is identical or confusingly similar to it. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007).
In the present case, the main part of the Complainant’s trademarks is the expression SILKSKIN, which is entirely reproduced in the disputed domain name. The only difference between them consists in the inclusion of the country-code top-level domain “.us.” Nonetheless, such a difference is directly derived from the current technical structure of the Domain Name System (DNS) and, consequently, they should not be considered as relevant differences between the domain name and the Complainant’s SILKSKIN trademarks, as it does not distinguish the disputed domain name from Complainant’s mark under Policy 4(a)(i).
Many decisions adopted under the Policy have taken this approach. See, e.g., Toray Indus., Inc. v. Yassievich, FA 998100 (Nat. Arb. Forum July 12, 2007); see also New York Life Ins. Co. v. Puthiyoth, D2000‑0812 (WIPO Oct. 18, 2000); see also A & F Trademark v. Party Nigh Inc., D2003‑0172 (WIPO June 17, 2003). Consequently, the Panel considers that the Complainant has fulfilled the first one of the conditions required by the Policy.
Rights or Legitimate Interests
The second aspect needed according to the Policy 4(a)(ii) is the lack of rights or legitimate interests of the Respondent bearing the domain name <silkskin.us>.
It is important to underline the fact, that the Respondent did not attached with the response any evidence that demonstrates the existence and/or organization of the company ROYAL SILK DIRECT, INC. in any State of the United States of America (as stated in the Respondent’s web page), from the date of creation of the domain name April 24, 2002 and/or at least prior to be served of the Complaint on April 14, 2008.
It was also overlooked by the Respondent to prove that its business ROYAL SILK DIRECT, INC. is well known in the market and also known by its domain name.
However, the Complainant did not state any argument to establish Respondent’s lack of rights or legitimate interests pursuant to Policy 4(a)(ii). See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003).
The Complainant also failed to prove the notoriety of the trademarks SILKSKIN in the United States of America or at least to file evidence of the promotion, advertising and sales of the products for skin care and cosmetics that the Complainants commercializes. This, is considered in the present case key evidence, taking into account the proofs filed by Respondent that demonstrate the common use of the Complainant’s trademarks in other domain names such as: <silkskinlaser.com>, <silkskin.co.uk>, <silkskin.be>, <silkskinbc.com>, <silkskin.de>, <silkskin.ru>, <silkskin.net>, <silkskin.org>, <silkskin.info>, and <silkskin.biz>. This Panel ex officio verified that those web pages exist and are active in the name of third parties of this complaint.
In this regard, Respondent also established that there are other owners of the trademark SILKSKIN duly registered before the USPTO, to cover goods of International Class 25 (which is directly related to the products that Respondent sells) with the certificates No. 1,675,205, 3,055,665 and 1,348,004, filing copy of the same as exhibits of the response.
The Panel could ex officio verify before the USPTO the existence of the above, finding that the owners of said registrations are: LAMOUR GLOBAL INC. LIMITED (Trademark SILKSKINS), LANIFICIO ERMENEGILDO ZEGNA & FIGLI S.p.A. (Trademark SILKSKIN) and LAMOUR GLOBAL INC. LIMITED (Trademark SILKSKIN) and all are currently in force.
In this regard, it is important to point out that the foregoing trademarks are registered to cover goods of International Class 25. On the other hand, Respondent uses its domain name for selling textiles and clothing. Consequently, Complainant should have prove that the goods for which its trademarks SILKSKIN are registered, are related to apparel and the other products included in International Class 25. This, as in the point of view of this Panel there are other owners of the trademark SILKSKIN that have a better right to obtain the domain name <silkskin.us> than the Complainant, according to the precarious evidence filed by the latter in this proceeding.
Eventhough, it is not possible for this Panel to declare the fair use of the Respondent as the same did not prove its rights or legitimate interests in the disputed domain name. It is also impossible to state that the Complainant evidenced the contrary in this case, in order to decide in its favor transferring the domain name <silkskin.us>.
Regarding this point, it is important to underline the fact that the Respondent apparently has a company named ROYAL SILK DIRECT, INC. and when entering the domain name <silkskin.us> it redirects the Internet users to another domain name <royalsilk.us/xcart/catalog/index.html>, which is related to the Respondent’s business. However, this cannot be taken as a conclusive presumption bearing in mind the precarious arguments set forth by the Complainant and the evidence filed.
Based on the position described herein, Complainant has failed to satisfy paragraph 4(a)(ii). See Qwest Commc’ns Int’l v. QC Publ’g Group, Inc., FA 286032 (Nat. Arb. Forum July 23, 2004); see also Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001); see also Gen. Mach. Prods. Co., Inc. v. Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000).
The third of the elements foreseen by paragraph 4(a)(iii) of the Policy is that the Complainant proves that the Respondent has registered and is using the disputed domain name in bad faith.
These conditions are cumulative (both have to be proven by the Complainant), as stated in many decisions adopted under the Policy. See, e.g., World Wrestling Fed’n Entm’t, Inc. v. Bosman, D1999‑0001 (WIPO Jan. 18, 2000); see also Ellenbogen v. Pearson, D2000‑0001 (WIPO Feb. 21, 2000).
Complainant set forth that Respondent registered the domain name in bad faith with the only purpose of confusing the Internet users taking advantage of the prestige of the trademarks SILKSKIN of the Complainant. However, Complainant did not file any evidence of the notoriety and/or prestige of its trademarks as state above, nor at the time when the domain name was registered on April 24, 2002. Thus, there is no clear intention of bad faith of the Respondent at the time of registration of the domain name, profiting unfairly from the trademarks owned by the Complainant. See, e.g., Teradyne, Inc. Teradyne, Inc. v. 4Tel Tech., D2000‑0026 (WIPO May 10, 2000); see also Tarkan Tevetoglu & H.I.T.T. Muzik Produksiyon Tanitim Turizm Sanayi Ve Dis Ticaret Ltd.Sti., v. Deep.Net Corp., D2002‑0278 (WIPO June 6, 2002; see also Yoomedia Dating Ltd. v. Cynthia Newcomer Dateline BBS, D2004‑1085 (WIPO Feb. 22, 2005); see also Guildline Instruments Ltd. v. Anderson, D2006‑0157 (WIPO Apr. 12, 2006).
On the other hand, Complainant established that Respondent is using silkskin.us in bad faith with gain purposes deviating the clients from its web site and creating confusion among them leading them to believe that both are associate or related.
Eventhough this Panel finds suspicious that the Respondent has a domain name that does not reproduce its business name and deviates the Internet users to another different address, <royalsilk.us/xcart/catalog/index.html>, which is directly connected with its company, this fact itself is not enough to declare that the Respondent uses the disputed domain in bad faith.
The foregoing, because this Panel ex officio verified that it is true as stated by the Respondent, that there is no other link on the Internet to access the web site <silkskin.us>, unless the Internet users type exactly the above address. Therefore, as Complainant has not provided any evidence of the damages, relation or confusion between its cosmetics and skin care goods, and the clothing and textiles that Respondent sells, the Panel concludes that Respondent did not register the disputed domain name in bad faith pursuant to Policy 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Having failed to establish the second and third element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Fernando Triana, Esq., Panelist
Dated: June 25, 2008
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