national arbitration forum

 

DECISION

 

Guthy-Renker LLC v. Thomas Ham

Claim Number: FA1002001309105

 

PARTIES

Complainant is Guthy-Renker LLC (“Complainant”), represented by Daniel M. Cislo, of Cislo & Thomas LLP, California, USA.  Respondent is Thomas Ham (“Respondent”), Singapore.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <proactive-acne-treatment.com>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 19, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.

 

On February 22, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <proactive-acne-treatment.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 February 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@proactive-acne-treatment.com.  Also on February 24, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1.  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <proactive-acne-treatment.com> domain name is confusingly similar to Complainant’s PROACTIV mark.

 

2.      Respondent does not have any rights or legitimate interests in the <proactive-acne-treatment.com> domain name.

 

3.      Respondent registered and used the <proactive-acne-treatment.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Guthy-Renker LLC, is the marketer for Proactiv which includes acne treatment, make-up, and other topical skin treatment products.  Complainant owns numerous trademarks with the United States Patent and Trademark Office (“USPTO”) for its PROACTIV mark (e.g., Reg. No. 2,574,142 issued on May 28, 2002).  Complainant also owns trademark registrations with the Intellectual Property Office of Singapore (“IPOS”) for its PROACTIV mark (e.g., Reg. No. T0721367E issued on November 2, 2007).

 

Respondent registered the <proactive-acne-treatment.com> domain name on December 1, 2006.  Respondent’s disputed domain name resolves to a website that displays third-party links to websites offering similar skin care goods in competition with Complainant.  Upon receiving a cease and desist letter from Complainant, Respondent offered to sell the domain name to Complainant for $50,000.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant owns numerous trademarks with the USPTO (e.g., Reg. No. 2,574,142 issued on May 28, 2002), and the IPOS (e.g., Reg. No. T0721367E issued on November 2, 2007) for its PROACTIV mark.  The Panel finds that Complainant has established rights in its PROACTIV mark under Policy ¶ 4(a)(i) through its multiple government authority trademark registrations.  See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).

 

Respondent’s <proactive-acne-treatment.com> domain name contains a misspelled version of Complainant’s PROACTIV mark by adding the letter “e” to the mark.  Further the disputed domain name contains hyphens separating the added descriptive terms “acne” and “treatment” from each other and the word “proactive.”  The above descriptive terms all relate to Complainant’s product line for skin care.  The Panel finds that Respondent’s <proactive-acne-treatment.com> domain name that contains a misspelled version of Complainant’s mark, while adding hyphens and descriptive terms is not distinguishable from Complainant’s PROACTIV mark under Policy ¶ 4(a)(i).  The Panel further finds that the addition of the generic top level domain (“gTLD”) “.com” is not relevant to Policy ¶ 4(a)(i) analysis.  See Columbia Sportswear Co. v. Keeler, D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens ‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR COMPANY”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); 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).”).  Therefore, the Panel finds that Respondent’s <proactive-acne-treatment.com> domain name is confusingly similar to Complainant’s PROACTIV mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.      

 

Rights or Legitimate Interests

 

Complainant declares that Respondent does not have any rights or legitimate interests in the <proactive-acne-treatment.com> domain name.  Complainant is required to make a prima facie case in support of these allegations.  Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show why it has rights or interests in the disputed domain name. 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 Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“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.”).  The Panel finds that the Complainant has produced a prima facie case.  Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name.  The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).

 

Complainant contends that Respondent has not been granted permission to use Complainant’s mark, nor is Respondent commonly known by the <proactive-acne-treatment.com> domain name.  The WHOIS information for the disputed domain name identifies “Thomas Ham” as the registrant of the domain name, and there is no further evidence on record indicating that Respondent is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <proactive-acne-treatment.com> domain name under 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 was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

Complainant further contends that Respondent’s use of the disputed domain name does not lead to a bona fide offering of goods or services, or a noncommercial or fair use.  Respondent’s disputed domain name resolves to a website containing third-party links to websites that offer similar skin care goods in competition with Complainant.  The Panel finds that Respondent’s use of the confusingly similar domain name to attract Internet users to its website that displays links to the competitors of Complainant, presumably for financial gain, is not in connection with 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).  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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites). 

 

Complainant also offers evidence that Respondent has offered to sell the disputed domain name to Complainant, for $50,000 upon receiving Complainant’s initial cease and desist letter.  Complainant contends that Respondent’s willingness to sell the disputed domain name for well over its acquisition costs is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name.  The Panel finds that Respondent’s offering to sell the <proactive-acne-treatment.com> domain name for $50,000 is further evidence that Respondent lacks rights and interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).   

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent, in its communications with Complainant, has offered to sell the <proactive-acne-treatment.com> domain name for $50,000.  Complainant argues that the offer to sell the disputed domain name for more than Respondent’s out-of-pocket expenses is evidence of registration and use in bad faith.  The Panel finds that Respondent’s offer to sell the disputed domain name for $50,000 is evidence of bad faith registration and use under Policy ¶ 4(b)(i).  See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where the respondent stated in communication with the complainant that it would be ready to sell the <matmut.com> domain name registration for $10,000); see also Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant).

 

Complainant also argues that Respondent’s use of the dispute domain name to redirect Internet users to the websites of Complainant’s competitors is evidence of bad faith registration and use.  The Panel finds that Respondent has engaged in disruption of Complainant’s business where it diverts Internet users seeking information on Complainant’s products to the websites of its competitors, and that such use is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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).”).

 

Respondent is using the <proactive-acne-treatment.com> domain name in an attempt to attract Internet users to its website where it displays links to Complainant’s competitors.  Complainant contends that Respondent receives referral fees from the links to third-party websites displayed on its website, and that this type of use is further evidence of bad faith.  The Panel finds that Respondent’s use of the confusing similarity between its <proactive-acne-treatment.com> domain name and Complainant’s PROACTIV mark to attract Internet users to its website where it financially gains from click-through fees is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). 

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <proactive-acne-treatment.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  April 7, 2010

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum