Mystic Tan, Inc. v. VOV Solutions, Inc.
Claim Number: FA0807001217129
Complainant is Mystic Tan, Inc. (“Complainant”), represented by Darin
M. Klemchuk,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mymystictan.com>, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 24, 2008.
On July 24, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <mymystictan.com> domain name is registered with Godaddy.com, Inc. and that 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 ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July
29, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 18, 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@mymystictan.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 21, 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 has sold tanning booths and tanning-related products and services to public customers since 1998.
Complainant owns at least 17 trademark and service mark registrations with the United States Patent and Trademark Office (“USPTO”), including for the MYSTIC TAN service mark (Reg. No. 2,377,171, issued August 15, 2000).
Complainant also owns and operates the <mystictan.com> domain name.
Respondent registered the <mymystictan.com> domain name on February 12, 2008.
Respondent is currently using the disputed domain name to resolve to a website that appears to offer tanning services in direct competition with the business of Complainant.
Respondent’s <mymystictan.com> domain name is confusingly similar to Complainant’s MYSTIC TAN mark.
Respondent does not have any rights to or legitimate interests in the domain name <mymystictan.com>.
Respondent registered and uses the <mymystictan.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 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 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’s registration of the MYSTIC TAN service mark
with the USPTO adequately confers upon Complainant rights in the mark under
Policy ¶ 4(a)(i). See Metro. Life
Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that
a trademark registration adequately demonstrates a complainant’s rights in a
mark under Policy ¶ 4(a)(i)); see also
The disputed domain name contains Complainant’s entire
MYSTIC TAN mark, and merely adds the word “my” and includes the generic
top-level domain (“gTLD”) “.com.” Neither
of these additions creates a meaningful distinction between the disputed domain
name and the mark. Therefore, we conclude
that Respondent’s domain name is confusingly similar to Complainant’s mark
under Policy ¶ 4(a)(i). See Trip Network
Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that
the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is
irrelevant to a Policy ¶ 4(a)(i) analysis); see also NIIT Ltd. v.
Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the
“domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part
thereof, is confusingly similar to the Complainant’s trade name and trademark
NIIT”).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Because Complainant has set out a prima facie case supporting its allegations, Respondent carries the burden to show 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 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”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right or legitimate interest in a disputed domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
Complainant has made out a prima facie case sufficient for purposes of the Policy, while Respondent, for its part, has failed to respond to the Complaint. In such circumstances, we are entitled to conclude that Respondent has no rights to or interests in the disputed domain name cognizable under the Policy. Nonetheless, we will examine the available evidence to determine if there is any basis in the record before us for concluding that Respondent has such rights or interests under the criteria set out in Policy ¶ 4(c).
We begin by noting that there is nothing in the evidence,
including the pertinent WHOIS information, which would allow the conclusion
that Respondent is or ever was commonly known by the disputed domain name. The WHOIS information lists the registrant as
“VOV Solutions, Inc.” Therefore, in the
absence of other evidence bearing on this issue, we conclude that Respondent is
not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that a respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that that respondent was commonly known by the disputed
domain name).
We also note that
there is no dispute as to Complainant’s allegation to the effect that Respondent’s
domain name resolves to a website that appears to offer tanning services in
competition with the business of Complainant.
Such commercial use leads us to conclude that Respondent is not making a
bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May
11, 2007) (finding that a respondent’s use of a domain name to advertise real
estate services which competed with a complainant’s business did not constitute
a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii)); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002): “Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
By including Complainant’s mark in its domain name, Respondent
has created a likelihood of confusion as to the possibility of Complainant’s
endorsement of or other connection with the domain name and corresponding
website. Respondent has therefore
engaged in bad faith registration and use of the domain under Policy ¶
4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14,
2001) (finding bad faith where a respondent used a domain name, for commercial
gain, to attract users to a direct competitor of a complainant); see also Nokia
Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith
registration and use pursuant to Policy ¶ 4(b)(iv) where a domain name resolved
to a website that offered products similar to those sold under a complainant’s
famous mark).
In addition, it appears that Respondent registered the <mymystictan.com> domain name with at least constructive knowledge of
Complainant’s rights in the MYSTIC TAN service mark 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 <mymystictan.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 4, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum