Guthy-Renker LLC v. Jim Perkins
Claim Number: FA0909001283906
Complainant is Guthy-Renker LLC (“Complainant”), represented by Daniel
M. Cislo, of Cislo & Thomas LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freeproactiv.net>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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 October 13, 2009, 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 continuously used its PROACTIV mark since at least as early as February, 1991, in connection with goods including acne treatment preparations, make-up, and a cosmetic skin care line.
Complainant holds several registrations of the PROACTIV trademark
with the United States Patent and Trademark Office (“USPTO”), including Reg.
No. 1,890,769, issued
Respondent has no association or affiliation with Complainant and Respondent has never received any license or other permission to use Complainant’s PROACTIV mark or any variation thereof.
Respondent registered the <freeproactiv.net>
domain name on
The WHOIS information associated with the disputed domain names identifies Respondent only as “Jim Perkins.”
The website resolving from the disputed domain name purports to offer a “free 30 day supply 5 piece proactive acne solution kit.”
The website displays a box for Internet users to submit their e-mail address, photographs of Complainant’s celebrity spokespersons Jessica Simpson and Jennifer Love Hewitt, and advertisements for Complainant’s products.
Respondent’s <freeproactiv.net> domain name is confusingly similar to Complainant’s PROACTIV mark.
Respondent does not have any rights to or legitimate interests in the <freeproactiv.net> domain name.
Respondent registered and uses the <freeproactiv.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
a. the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
b. Respondent has no rights to or legitimate interests in respect of the domain name; and
c. the 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
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.
By registering the PROACTIV trademark with the USPTO,
Complainant has established rights in the mark sufficient for purposes of Policy
¶ 4(a)(i). See Reebok Int’l Ltd. v.
domain name is comprised of (1) the generic word “free,” (2) Complainant’s
unaltered PROACTIV mark, and (3) the generic top-level domain (“gTLD”)
“.net.” The domain name is therefore confusingly
similar to Complainant’s PROACTIV mark pursuant to Policy ¶ 4(a)(i). See Katadyn N. Am. v.
[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.
See also Warner Bros.
Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
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 <freeproactiv.net> domain name. If
Complainant’s allegations establish such a prima facie case, the burden then
shifts to Respondent to show that it does have rights to or legitimate
interests in the disputed domain name.
See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb.
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no
rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Because
no response was submitted in this case, we are entitled to 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).
We will nonetheless examine the record before us in consideration of the factors listed in Policy ¶ 4(c) to determine if there is any basis for determining that Respondent has any such rights or interests in the disputed domain name sufficient to satisfy the requirements of the Policy.
We begin by observing that Complainant contends, and
Respondent does not deny, that Respondent uses the disputed domain name, without
Complainant’s authorization, to resolve to a website offering Complainant’s
goods for free. This use of the domain
name is not a bona fide offering of
goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii), respectively. See Nat’l
Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO
Complainant also contends that it has not granted Respondent any license of other permission to use its PROACTIV mark. Further, Complainant asserts that the WHOIS information associated with the disputed domain name identifies Respondent only as “Jim Perkins.” There is, as well, no evidence in the record to indicate that Respondent is commonly known by disputed domain name. We conclude therefore that Respondent is not commonly known by <freeproactiv.net> domain name within the meaning of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003): “Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
There is no dispute as to Complainant’s allegation to the
effect that the website resolving from the <freeproactiv.net>
domain name purports to offer a free thirty-day supply of Complainant’s acne
treatment kit. Respondent’s behavior, as
alleged, disrupts Complainant’s business by offering Complainant’s goods for
free where Internet users might otherwise pay for them. This behavior establishes in the circumstances
here presented that Respondent’s registration and use of the disputed domain
was and is done in bad faith under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Given that the <freeproactiv.net>
domain name is confusingly similar to Complainant’s PROACTIV mark, and that the
resolving website offers Complainant’s goods and displays pictures featuring
Complainant’s celebrity spokespeople, Internet users will very likely be
confused as to the possibility that Complainant may have authorized Respondent
to offer Complainant’s goods or use its mark.
We are entitled to presume from the circumstances that Respondent
intends to profit from this behavior. We
therefore conclude that Respondent’s behavior as alleged amounts to bad faith
registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum
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 <freeproactiv.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 28, 2009
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