Philosophy, Inc. v. AskMySite.com LLC
Claim Number: FA0912001297667
Complainant is Philosophy, Inc. (“Complainant”), represented by J.
Rick Tache, of Snell & Wilmer L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <philosophyhair.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 17, 2009.
On December 7, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <philosophyhair.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 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 6, 2010 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@philosophyhair.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 14, 2010, 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 holds trademark
registrations with the United States Patent and Trademark Office (“USPTO”) for
the PHILOSOPHY trademark (including Reg. No. 2,016,208, issued November 12,
1996) in connection with the marketing of cosmetics, skin care and hair care
products.
Respondent registered the <philosophyhair.com>
domain name on October 11, 2009.
The disputed domain name resolves to a website featuring pay-per-click links to commercial websites unrelated to the business of Complainant.
Respondent’s <philosophyhair.com> domain name is confusingly similar to Complainant’s PHILOSOPHY mark.
Respondent is not commonly known by the disputed domain name and has no history of being associated with or operating a business under the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <philosophyhair.com>.
Respondent registered and uses the <philosophyhair.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.
Complainant has established rights in its PHILOSOPHY trademark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As
the [complainant’s] mark is registered with the USPTO, [the] complainant has
met the requirements of Policy ¶ 4(a)(i).
See also
Complainant argues that Respondent’s <philosophyhair.com> domain name is confusingly similar to Complainant’s PHILOSOPHY mark pursuant to Policy ¶ 4(a)(i). We agree. Respondent’s domain name incorporates the entirety of Complainant’s mark and merely adds the descriptive term “hair” and the generic top-level domain (“gTLD”) “.com.” The addition of the descriptive term “hair,” which has an obvious relationship to Complainant’s business, creates confusing similarity between the disputed domain name and Complainant’s mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business); see also 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).
The addition of a gTLD to a registered mark in forming a
domain name is irrelevant in distinguishing the domain name from the mark
because every domain name must have a gTLD.
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); see
also Jerry Damson, Inc. v.
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it has such rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant, the burden shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name).
Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. Therefore, we may presume that Respondent does not have rights to or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, we will examine the record before us to determine if there is in it any basis for concluding that Respondent has rights or legitimate interests in the disputed domain name pursuant by reference to the standards set out in Policy ¶ 4(c).
We begin by observing that the pertinent WHOIS information
lists the registrant only as “AskMySite.com LLC.”
Moreover, Complainant asserts, and
Respondent does not deny, that Respondent is not commonly known by the disputed
domain name and has no history of being associated with or operating a business
under the disputed domain name. There being no evidence to the contrary in the
record, we are constrained to conclude that Respondent is not commonly known by
the disputed domain name pursuant to Policy ¶ 4(c)(ii). See
We also note that
there is no dispute as to Complainant’s assertion to the effect that the disputed domain name
resolves to a website featuring pay-per-click links to commercial websites
unrelated to the business of Complainant.
Respondent’s use of the disputed domain name, as alleged, is neither a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See
Bank of Am. Fork
v. Shen,
FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that a
respondent’s use of a domain name to redirect Internet users to websites
unrelated to a complainant’s mark is not a bona fide use of the domain under
Policy ¶ 4(c)(i)); see also Constellation
Wines U.S., Inc. v.
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
We have already concluded that the
disputed domain name resolves to a website featuring pay-per-click links to
commercial websites unrelated to the business of Complainant. Respondent is thus attempting to profit
financially by using Complainant’s mark in its domain name to attract Internet
users to Respondent’s website.
Respondent’s receipt of pay-per-click fees from the contested domain
name by creating a strong likelihood of confusion with Complainant’s PHILOSOPHY
mark is evidence of bad faith registration and use of the disputed domain name pursuant
to Policy ¶ 4(b)(iv).
See The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For
In addition, it appears that Respondent registered the <philosophyhair.com> domain name with at least constructive knowledge of
Complainant’s rights in the PHILOSOPHY 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).
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 <philosophyhair.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 21, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum