California Cosmetics, Inc. v. Vista.com, Inc.
Claim Number: FA0811001233378
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 <silkskinscompany.com>, registered with Wild West Domains, 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
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 19, 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 uses the SILKSKIN trademark in connection with the marketing of its line of skin care products for men.
Complainant was issued a trademark on June 25, 1991, for the SILKSKIN (Reg. No. 1,648,614) by the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <silkskinscompany.com> domain
The disputed domain name resolves to a website that advertises products, including body cleansers and moisturizers, that directly compete with the business of Complainant.
Respondent’s <silkskinscompany.com> domain name is confusingly similar to Complainant’s SILKSKIN mark.
Respondent does not have any rights or legitimate interests in the domain name <silkskinscompany.com>.
Respondent registered and uses the <silkskinscompany.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 trademark in which Complainant has rights; and
(2) Respondent has no rights to 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.
Under the Policy, Complainant must first establish that it
has rights in the SILKSKIN trademark.
Complainant’s registration of the SILKSKIN mark with the USPTO
establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum
domain name begins with the SILKSKIN trademark and
merely adds an “s”, followed by the generic term “company” and the generic
top-level domain (“gTLD”) “.com.” The
dominant element of the domain name is the SILKSKIN mark. Plurilizing the mark does not save the domain
name from being confusingly similar to the mark. See Nat’l
Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum
Moreover, adding the generic term “company” and the gTLD
“.com” does not remove the confusing similarity to the SILKSKIN mark under Policy ¶ 4(a)(i). See Magnum Piering, Inc. v. Mudjackers,
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
Therefore, the Panel finds that the <silkskinscompany.com> domain name is confusingly similar to Complainant’s SILKSKIN mark pursuant to Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima
facie case that Respondent has no rights to or legitimate interests in the
disputed domain name. If Complainant’s
allegations establish such a prima facie case, the burden shifts to
Respondent to show that it does indeed have rights to or legitimate interests
in the disputed domain name. This is
usually done by reference to the parameters set out in Policy ¶ 4(c). See
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
made out a prima facie case under this heading. Because no response was
submitted in this case, we may presume that Respondent has no rights to or
legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum
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).
Nonetheless, we will examine the record before us to determine whether there is any basis for concluding that Respondent has rights to or interests in the disputed domain name in light of the parameters set out in Policy ¶ 4(c).
We begin by noting that the pertinent WHOIS information
identifies Respondent as “Vista.com, Inc.” rather
than as the contested domain or any variant thereof. That being so, and given that there appears
in the record no other evidence to show that Respondent is commonly known by
the <silkskinscompany.com> domain name, we are compelled to conclude that Respondent has not
established rights to or legitimate interests in the disputed domoan name pursuant
to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb. Forum
We next observe that Complainant asserts, and Respondent
does not deny, that Respondent is using the <silkskinscompany.com>
domain name to resolve to a website that advertises products in direct
competition with the business of Complainant.
Respondent’s use of this domain name, as alleged, is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), nor is it a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay
Inc. v. Hong, D2000-1633 (WIPO
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
Respondent’s use of
Complainant’s SILKSKIN mark in a domain name to redirect Internet users to a website that
directly competes with Complainant’s business suggests that Respondent
registered the disputed domain name intending to disrupt Complainant’s
business. This is evidence of bad faith
registration and use of the domain under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
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).
In addition, it appears that Respondent registered the <silkskinscompany.com> domain name with at least constructive knowledge of Complainant’s rights in the SILKSKIN trademark 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).
The Panel thus finds that Complainant has satisfied its evidentiary obligations under Policy ¶ 4(a)(iii).
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 <silkskinscompany.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 29, 2008
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