SkinMedica, Inc. v. WWWEnterprise, Inc.
Claim Number: FA0908001278547
Complainant is SkinMedica,
Inc. (“Complainant”), represented by Wendy
Devine, of Wilson Sonsini Goodrich & Rosati,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <skinmedica-direct.com>, <skinmedicasale.com>, and <tnsskincare.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.
James A. Cary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 11, 2009.
On August 10, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <skinmedica-direct.com>, <skinmedicasale.com>, and <tnsskincare.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. 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 19, 2009, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of September 8, 2009
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@skinmedica-direct.com, postmaster@skinmedicasale.com, and
postmaster@tnsskincare.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 15, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <skinmedica-direct.com> and <skinmedicasale.com> domain names are confusingly similar to Complainant’s SKINMEDICA mark. Respondent’s <tnsskincare.com> domain name is confusingly similar to Complainant’s TNS mark.
2. Respondent does not have any rights or legitimate interests in the <skinmedica-direct.com>, <skinmedicasale.com>, and <tnsskincare.com> domain names.
3. Respondent registered and used the <skinmedica-direct.com>, <skinmedicasale.com>, and <tnsskincare.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant develops, acquires, and commercializes products
that treat dermatologic conditions and diseases and improve the appearance of
the skin. Complainant markets these
products under the SKINMEDICA mark, which Complainant registered with the
United States Patent and Trademark Office (“USPTO”) on August 26, 2003 (Reg. No.
2,757,644), and the TNS mark, which Complainant registered with the USPTO on
January 16, 2007 (Reg. No. 3,198,231).
Complainant markets its products around the
Respondent registered the <skinmedica-direct.com> domain name on November 5, 2007. Respondent registered the <skinmedicasale.com> domain name on February 12, 2008. Respondent registered the <tnsskincare.com> domain name on April 2, 2004. The disputed domain names resolve to a website that features links to third-party websites, some of which compete with Complainant for business.
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.
The Panel finds that for purposes of Policy ¶ 4(a)(i),
Complainant has established rights in both the SKINMEDICA mark through its
trademark registration with the USPTO (Reg. No. 2,757,644 issued August 26,
2003), and the TNS mark through its trademark registration with the USPTO (Reg.
No. 3,198,231 issued January 16, 2007). See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive."); see also U.S. Microsoft Corp. v. Burkes, FA 652743
(Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the
MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant has asserted
continuous use of the TNS mark since 2001, and has annually averaged
substantial revenue from the mark since that time. The Panel finds that Complainant has
demonstrated sufficient secondary meaning in the TNS mark to obtain common law
rights in the mark under Policy ¶ 4(a)(i). See Tuxedos By Rose v.
Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights
in a mark where its use was continuous and ongoing, and secondary meaning was
established); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005)
(finding that the complainant established common law rights in the STELLAR CALL
CENTRES mark because the complainant demonstrated that its mark had acquired
secondary meaning).
Complainant contends that
Respondent’s <skinmedica-direct.com> and <skinmedicasale.com>
domain names are confusingly similar to its SKINMEDICA
mark. Both of
the <skinmedica-direct.com> and <skinmedicasale.com>
domain names differ from Complainant’s mark in
two ways: (1) a generic term (“direct” and “sale,” respectively) has been added
to the end of mark; and (2) the generic top-level domain (“gTLD”) “.com” has
been added to the end of the mark. Additionally, the <skinmedica-direct.com> domain name has had a hyphen added to the SKINMEDICA
mark.
The Panel finds that under Policy ¶
4(a)(i), a domain name is not differentiated from a mark simply because a
generic term has been added, or because punctuation have been added. See Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of the
complainant combined with a generic word or term); see also Health Devices Corp.
v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition
of punctuation marks such as hyphens is irrelevant in the determination of
confusing similarity pursuant to Policy ¶ 4(a)(i).”). Furthermore, the
Panel finds that the addition of a gTLD does nothing to distinguish a domain
name from a mark because all domain names must include a top-level domain. See Trip
Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum Mar. 27, 2007) (concluding that the
affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore,
the Panel finds that the <skinmedica-direct.com> and <skinmedicasale.com>
domain names are not sufficiently distinguished
from, and are confusingly similar to, Complainant’s SKINMEDICA mark pursuant to Policy ¶ 4(a)(i).
Complainant also contends that
Respondent’s <tnsskincare.com> domain name is confusingly similar to its TNS mark. The <tnsskincare.com>
domain name differs from Complainant’s mark in
two ways: (1) the descriptive term “skincare” has been added to the end of the
mark; and (2) the generic top-level domain (“gTLD”) “.com” has been added to
the end of the mark. The Panel finds that under Policy ¶ 4(a)(i), a domain name is not differentiated from a mark simply
because a descriptive term has been added.
See Kohler Co. v.
Curley, FA 890812 (Nat. Arb.
Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in
its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion
to complainant’s business.”); 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)). Furthermore, as above, the Panel finds that the addition of
a gTLD does nothing to distinguish a domain name from a mark because all domain
names must include a top-level domain. See Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain names. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); 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.”).
Complainant contends that Respondent is not commonly known by the any of the disputed domain names, nor has it ever been the owner or licensee of either the SKINMEDICA mark or the TNS mark. Respondent has been identified as “WWWEnterprise, Inc.,” and no evidence, in the WHOIS records for the disputed domain names or elsewhere, indicates that Respondent has ever been commonly known by any of the disputed domain names. Because Respondent has failed to show any evidence contrary to Complainant’s contentions and is not known by any variant of either of Complainant’s SKINMEDICA and TNS marks, the Panel finds that Respondent is not commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); 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).
Respondent is using the disputed domain names to host a website that redirects Internet visitors to third-party websites that compete with Complainant’s business. The Panel finds that this use of the disputed domain names by Respondent 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 Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain names, all registered between 2004 and 2008, to
divert Internet customers from Complainant’s website to competitors’ websites,
thereby intentionally disrupting Complainant’s business. The Panel finds that Respondent is
intentionally disrupting Complainant’s business, and therefore did register and
use the disputed domain names in
bad faith pursuant to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (“This Panel concludes that by redirecting Internet users seeking
information on Complainant’s educational institution to competing websites,
Respondent has engaged in bad faith registration and use pursuant to Policy ¶
4(b)(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 also contends that Respondent gains commercially
from this diversion, as the website that resolves from the disputed domain names contains links
to third-party websites that most likely are submitting click-through fees to
Respondent. The Panel finds that
Respondent is intentionally using the disputed domain names for commercial gain
through a likelihood of confusion with Complainant’s mark, and so, pursuant to
Policy ¶ 4(b)(iv), this use is also evidence of
Respondent’s registration and use in bad faith. See
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 <skinmedica-direct.com>, <skinmedicasale.com>, and <tnsskincare.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: September 29, 2009
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