Ardyss International, Inc. v. Danilo Puentes
Claim Number: FA0911001296203
Complainant is Ardyss
International, Inc. (“Complainant”), represented by Michael W.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ardyssdreambody.com>, registered with Godaddy.com, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 25, 2009.
On November 25, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ardyssdreambody.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 December 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 29, 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@ardyssdreambody.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 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <ardyssdreambody.com> domain name is confusingly similar to Complainant’s ARDYSS mark.
2. Respondent does not have any rights or legitimate interests in the <ardyssdreambody.com> domain name.
3. Respondent registered and used the <ardyssdreambody.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ardyss International, Inc., markets and sells a variety of beauty, clothing, health care, nutrient, food, and other products. Complainant began by selling men’s and women’s underwear in 1993. Complainant spends over a hundred thousand dollars annually promoting, advertising, and marketing its products under its ARDYSS marks. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ARDYSS mark (e.g., Reg. No. 3,221,455 issued March 27, 2007).
Respondent registered the <ardyssdreambody.com> domain name on June 3, 2009. The disputed domain name resolves to a website that offers beauty, clothing, and health food products which compete with Complainant. Some of the competing products featured on Respondent’s website are counterfeit versions of Complainant’s own beauty, clothing, and health food products.
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 contends it has established rights in the ARDYSS
mark. Previous panels have found that
trademark registration with a federal trademark authority is sufficient to
establish rights in a mark.
Complainant alleges Respondent’s <ardyssdreambody.com> domain name is confusingly similar to Complainant’s ARDYSS mark. The disputed domain name contains Complainant’s mark and adds the generic terms “dream” and “body.” The Panel finds additions of generic terms are insufficient to adequately distinguish the disputed domain name from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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). The <ardyssdreambody.com> domain name further adds the generic top-level domain (“gTLD”) “.com.” Previous panels have held the addition of a gTLD is irrelevant under a Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Therefore, the Panel concludes Respondent’s <ardyssdreambody.com> domain name is confusingly similar to Complainant’s ARDYSS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <ardyssdreambody.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <ardyssdreambody.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent offers no evidence to suggest Respondent is commonly known by the <ardyssdreambody.com> domain name. Furthermore, the Panel fails to find evidence in the record that Respondent is commonly known by <ardyssdreambody.com> domain name. Complainant asserts that Respondent has never been authorized to use the ARDYSS mark. The WHOIS information, which identifies the domain name registrant, does not provide evidence that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds Respondent has failed to establish rights or legitimate interests in the <ardyssdreambody.com> domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); 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.”).
Respondent’s <ardyssdreambody.com> domain name
resolves to a website featuring beauty, clothing, and health food
products. These products compete with
Complainant’s products. Some of the
merchandise offered on the resolving website are
counterfeit versions of Complainant’s beauty, clothing, and health food
products. The Panel finds this use of a
confusingly similar disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
disputed domain names under Policy ¶ 4(c)(iii).
See Hewlett-Packard Co. v.
Inversiones HP Milenium
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <ardyssdreambody.com> domain name to sell beauty, clothing, and health food products which compete with Complainant. Some of the featured products on the resolving website are counterfeit versions of Complainant’s beauty, clothing, and health food products. Internet users may purchase either competing or counterfeit products instead of purchasing the same products from Complainant because of Respondent’s confusingly similar disputed domain name. The Panel finds Respondent’s use of the disputed domain name disrupts Complainant’s beauty, clothing, and health food products business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
The Panel infers Respondent commercially benefits from the sale of competing and counterfeit products. Internet users interested in Complainant’s business may become confused as to Complainant’s sponsorship of and association with the disputed domain name and resolving website. Respondent attempts to profit from this confusion from the sale of goods on the resolving website. Therefore, the Panel finds Respondent’s registration and use of the disputed domain name constitutes 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 Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <ardyssdreambody.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: January 18, 2010
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