philosophy, Inc. v. Brent McDaniel
Claim Number: FA1003001313870
Complainant is philosophy, Inc. (“Complainant”), represented by David
G. Barker, of Snell & Wilmer L.L.P.,
REGISTRAR
The domain name at issue is <philosophy-tshirts.com>, registered with Tucows 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March 22, 2010, the
Forum served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of April 12, 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@philosophy-tshirts.com. Also on
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 15, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 "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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <philosophy-tshirts.com> domain name is confusingly similar to Complainant’s PHILOSOPHY mark.
2. Respondent does not have any rights or legitimate interests in the <philosophy-tshirts.com> domain name.
3. Respondent registered and used the <philosophy-tshirts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Philosophy, Inc., is a
provider of cosmetic and skin care products, that also offers its brand-labeled
t-shirts for sale on its official <philosophy.com> website. Complainant owns several trademark
registrations with the United States Patent and Trademark Office (“USPTO”) for
its PHILOSOPHY mark (e.g. Reg. No.
2,016,208 issued on
Respondent, Brent McDaniel, registered the <philosophy-tshirts.com> domain name
on
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 Respondent has established rights in
its PHILOSOPHY mark under Policy ¶ 4(a)(i) through its trademark registrations
with the USPTO (e.g. Reg. No.
2,016,208 issued on Nov. 12, 1996). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum
Complainant argues that Respondent’s <philosophy-tshirts.com> domain name
is confusingly similar to its PHILOSOPHY mark.
Complainant notes that the disputed domain name contains its mark
entirely, while adding a hyphen, the descriptive term “tshirts” and the generic
top-level domain (“gTLD”) “.com.” The
Panel finds that Respondent’s <philosophy-tshirts.com>
domain name is confusingly similar to Complainant’s PHILOSOPHY mark pursuant to
Policy ¶ 4(a)(i) because it contains the disputed domain name entirely, adds a
hyphen and the generic term “tshirts” with the addition of the gTLD
“.com.” See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights
or legitimate interests in the <philosophy-tshirts.com>
domain name. Complainant is required to
make a prima facie case in support of
these allegations. After Complainant has
produced a prima facie case the
burden of proof shifts to Respondent to show that it has rights or legitimate
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 American Express Co. v. Fang
Suhendro, FA 129120 (Nat.
Arb. Forum
Complainant argues that it has not granted Respondent permission to use its mark, nor is Respondent commonly known by the disputed domain name. The WHOIS information for the disputed domain name does not indicate, and Respondent offers no evidence to show, that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <philosophy-tshirts.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s disputed domain name resolves to a website that features Respondent’s t-shirts for sale. Complainant asserts that use of the confusingly similar disputed domain name for commercial gain is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel agrees that Respondent’s use of the <philosophy-tshirts.com> domain name to commercially benefit from the confusion created with Complainant’s PHILOSOPHY mark is not a use in connection with 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 G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit); see also Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not 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’s use of the confusingly similar domain name to sell Respondent’s own product line of t-shirts is evidence of bad faith registration and use. Complainant submits that Respondent’s commercial gain from the use of a confusingly similar domain name to Complainant’s mark shows that Respondent registered the <philosophy-tshirts.com> domain name in bad faith. The Panel finds that Respondent’s appropriation of Complainant’s mark in the disputed domain name to intentionally attract Internet users to its website where it commercially benefits from the diversion, is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also 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)).
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 <philosophy-tshirts.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 23, 2010
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