Too Faced Cosmetics Inc. v. PLUTO DOMAIN SERVICES PRIVATE LIMITED.
Claim Number: FA0811001235500
Complainant is Too
Faced Cosmetics, Inc. (“Complainant”), represented by Amanda J. McLaughlin, of Burkhalter Kessler Goodman & George LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <toofacedcosmetics.com>, registered with Lead Networks Domains Pvt. Ltd.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 24, 2008.
On December 11, 2008, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <toofacedcosmetics.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. 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 December 16, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 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@toofacedcosmetics.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 7, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <toofacedcosmetics.com> domain name is confusingly similar to Complainant’s TOO FACED mark.
2. Respondent does not have any rights or legitimate interests in the <toofacedcosmetics.com> domain name.
3. Respondent registered and used the <toofacedcosmetics.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Too Faced Cosmetics Inc., operates a cosmetics business under its TOO FACED mark. Complainant first registered its TOO FACED mark with the United States Patent and Trademark Office on July 27, 1999 (Reg. No. 2,265,543). Complainant has provided additional registration information for its TOO FACED mark with other governmental trademark authorities.
Respondent registered the disputed domain name on October 18, 2002. Respondent’s disputed domain name resolves to a website featuring links to the websites of Complainant’s competitors.
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 provided the Panel information regarding the
registration of its TOO FACED mark with the USPTO and other governmental trademark
authorities. The Panel finds
Complainant’s submissions sufficiently establish its rights in the TOO FACED
mark pursuant to Policy ¶ 4(a)(i). See
Miller Brewing
Complainant maintains the <toofacedcosmetics.com> domain name is confusingly similar to Complainant’s TOO FACED mark because it combines the mark in its entirety with the additions of the descriptive term “cosmetics” and the generic top-level domain “.com.” The Panel finds these alterations do not distinguish the disputed domain name from Complainant’s mark and thus finds the two are confusingly similar pursuant to Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not possess any rights or legitimate interests in the disputed domain name. Complainant must present a prima facie case to support these allegations before the burden shifts to Respondent to prove it does have rights or legitimate interests in the disputed domain name. The Panel finds Complainant has presented an adequate prima facie case to support its allegations and Respondent has failed to respond to the Complaint. Therefore, the Panel may conclude Respondent does not possess rights or legitimate interests in the disputed domain name. The Panel, however, will examine the record and determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Respondent’s <toofacedcosmetics.com> domain name resolves to a website displaying links to third-party websites marketing cosmetics in direct competition with Complainant’s business. The Panel finds Respondent’s use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)) .
Complainant contends Respondent is not commonly known by the disputed domain name. Nothing in the WHOIS information or the record indicates Respondent has ever been known by the <toofacedcosmetics.com> domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <toofacedcosmetics.com> domain
name resolves to a website that provides links to third-party websites
competing with Complainant. The Panel
finds Respondent’s use of the disputed domain name constitutes disruption of
Complainant’s business and is therefore evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iii). See
David Hall Rare Coins v.
Respondent presumably receives compensation for its use of
the confusingly similar disputed domain name to display links to websites in
competition with Complainant. The Panel
finds Respondent is attempting to profit by creating confusion amongst Internet
users as to Complainant’s affiliation with the disputed domain name and
resolving website. The Panel finds these
actions are evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
The Panel finds 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 <toofacedcosmetics.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 19, 2009
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