SkinMedica, Inc. v. W-Max Inc.
Claim Number: FA0807001218309
Complainant is SkinMedica, Inc. (“Complainant”), represented by Dave
Deonarine, of Wilson Sonsini
Goodrich & Rosati,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <officialvaniqa.com>, registered with Godaddy.com, Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 30, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 31, 2008.
On July 31, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <officialvaniqa.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 August
12, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 2, 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@officialvaniqa.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 8, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <officialvaniqa.com> domain name is confusingly similar to Complainant’s VANIQA mark.
2. Respondent does not have any rights or legitimate interests in the <officialvaniqa.com> domain name.
3. Respondent registered and used the <officialvaniqa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SkinMedica, Inc., based in
Respondent registered the <officialvaniqa.com> domain name on November 2, 2007. Respondent’s disputed domain name resolves to a website that is similar in appearance to Complainant’s own website, features information on Complainant’s products which was written by Complainant and lifted directly from its website, prominently displays Complainant’s mark, and redirects Internet users to a website that sells products in 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 has established rights in the VANIQA mark
through registration of the mark with the USPTO. Complainant’s evidence is sufficient to
establish rights in the mark under Policy ¶ 4(a)(i). See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive [or] have acquired secondary meaning.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”).
Complainant contends that Respondent’s <officialvaniqa.com> domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name contains Complainant’s VANIQA mark, adds the generic term “official,” and the generic top-level domain (“gTLD”) “.com.” Past panels have held, as this Panel also holds, that neither addition is sufficient to distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in the <officialvaniqa.com> domain name. In instances where a complainant has made a prima facie case, the burden shifts to the respondent to set forth evidence that it does possess rights or legitimate interests in the disputed domain name. The Panel finds that, in the instant case, Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See 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”); 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).”).
Complainant contends that Respondent is using the <officialvaniqa.com>
domain name to operate a website that is similar in appearance and content to
Complainant’s own website, even featuring content directly copied from
Complainant, displays Complainant’s VANIQA mark, and redirects Internet users
to a website where products of Complainant’s competitors are sold. Respondent is attempting to lure Internet
users into Respondent’s website by fooling them into thinking that they are
purchasing Complainant’s products directly from the manufacturer but then
profiting from this confusion by selling other competing products. Such efforts by Respondent to pass itself off
as Complainant only to profit from this confusion clearly shows that Respondent
has no rights or legitimate interests in any way. This use 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 Am. Int’l Group, Inc. v. Busby, FA
156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent
attempts to pass itself off as the complainant online, which is blatant
unauthorized use of the complainant’s mark and is evidence that the respondent
has no rights or legitimate interests in the disputed domain name); see also Crow v.
LOVEARTH.net, FA 203208 (Nat. Arb. Forum
Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or
services, nor an example of a legitimate noncommercial or fair use under Policy
¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to
a registered mark, attempts to profit by passing itself off as Complainant . .
. .”).
Complainant further contends that Respondent is not commonly
known by the <officialvaniqa.com> domain name. The WHOIS information for the disputed domain
name lists the registrant as “W-Max Inc.,” and
gives no indication of an affiliation or association with Complainant other
than their blatant attempts at passing themselves off as Complainant. The Panel finds that without evidence to the
contrary, Respondent is not commonly known by the <officialvaniqa.com> domain name under Policy ¶ 4(c)(ii). See Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
see also Ian Schrager Hotels, L.L.C. v.
Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without
demonstrable evidence to support the assertion that a respondent is commonly
known by a domain name, the assertion must be rejected).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that the website resolving from Respondent’s <officialvaniqa.com> domain name prominently features information of Complainant’s products along with Complainant’s VANIQA mark. What is more, upon luring Internet users into thinking that they have navigated to Complainant’s “official” website, Respondent’s website connects these users to another website that sells competing cosmeceutical products. The Panel finds this use to be a clear violation of Policy ¶ 4(b)(iii) as they are attempting to profit by disrupting Complainant’s business. See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); 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).
Moreover, Complainant contends that Respondent’s use is a quintessential attempt by Respondent to confuse Internet users into doing business with Respondent while thinking that they are actually doing business with Complainant. The Panel agrees with Complainant and finds that Respondent’s activities show further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).
Finally, Respondent’s <officialvaniqa.com> domain name
prominently displays Complainant’s VANIQA mark along with information regarding
Complainant’s products. The Panel finds
that Respondent was intentionally attempting to pass itself off as Complainant,
and such is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum
Dec. 14, 2004) (finding bad faith because the respondent not only registered
Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET
mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain
name] . . . to a point of being indistinguishable from the original.”);
see also Am.
Online, Inc. v. Miles, FA 105890 (Nat.
Arb. Forum May 31, 2002) (“Respondent is using the domain
name at issue to resolve to a website at which Complainant’s trademarks and
logos are prominently displayed.
Respondent has done this with full knowledge of Complainant’s business
and trademarks. The Panel finds that this conduct is that which is prohibited
by Paragraph 4(b)(iv) of the Policy.”).
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 <officialvaniqa.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: September 17, 2008
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