national arbitration forum

 

DECISION

 

TRIA Beauty, Inc. v. Lei Zhou

Claim Number: FA1004001319480

 

PARTIES

Complainant is TRIA Beauty, Inc. (“Complainant”), represented by Truman H. Fenton, of King & Spalding LLP, Texas, USA.  Respondent is Lei Zhou (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <triabest.com>, registered with Melbourne IT, Ltd.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2010.

 

On April 19, 2010, Melbourne IT, Ltd confirmed by e-mail to the National Arbitration Forum that the <triabest.com> domain name is registered with Melbourne IT, Ltd and that Respondent is the current registrant of the name.  Melbourne IT, Ltd has verified that Respondent is bound by the Melbourne IT, Ltd 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 April 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@triabest.com.  Also on April 22, 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 May 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" 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 <triabest.com> domain name is confusingly similar to Complainant’s TRIA mark.

 

2.      Respondent does not have any rights or legitimate interests in the <triabest.com> domain name.

 

3.      Respondent registered and used the <triabest.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, TRIA Beauty, Inc., holds trademark registrations for the TRIA mark in connection with its laser-based hair removal systems.  Complainant owns multiple trademark registrations for the TRIA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,360,633 issued Dec. 5, 2007).

 

Respondent, Lei Zhou, registered the <triabest.com> domain name on January 22, 2010.  The disputed domain name resolves to a website that attempts to pass itself off as Complainant and sell counterfeit versions of Complainant’s goods.

 

 

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 multiple trademark registrations with the USPTO for the TRIA mark (e.g., Reg. No. 3,360,633 issued Dec. 25, 2007).  The Panel finds that USPTO trademark registrations are conclusive evidence of Complainant’s rights in the TRIA mark according to Policy ¶ 4(a)(i), regardless of whether Respondent operates in a different country.  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant contends that Respondent’s <triabest.com> disputed domain name is confusingly similar to Complainant’s TRIA mark because Respondent’s disputed domain name fully incorporates Complainant’s mark and makes only two modifications:  it adds the generic term “best” and appends the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of a single generic term does not create a domain name distinct from Complainant’s mark.  See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v. Miller, FA 180625 (Nat. Arb. Forum Sept. 15, 2003) (finding confusing similarity where “[t]he domain name includes Complainant’s mark with the addition of the descriptive word “hot,” which does not dispel any confusion arising from the inclusion of Complainant’s mark in the domain name.”).  The Panel also finds that the addition of a gTLD is immaterial to a Policy         ¶ 4(a)(i) analysis and serves no distinguishing function.  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“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 concludes that Respondent’s <triabest.com> disputed domain name is confusingly similar to Complainant’s TRIA mark according to Policy ¶ 4(a)(i). 

 

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

 

Rights or Legitimate Interests

 

Complainant argues that Respondent does not possess rights or legitimate interests in the <triabest.com> disputed domain name.  Policy ¶ 4(a)(ii) requires that Complainant establish a prima facie case against Respondent before Respondent has the burden to prove its rights and legitimate interests.  In this instance, Complainant has adequately presented a prima facie case, but Respondent has failed to respond.  As a result, the Panel may assume that Complainant’s allegations are true in that Respondent lacks rights and legitimate interests in the disputed domain name.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”); 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.”).  The Panel elects, however, to consider the evidence in light of the Policy ¶ 4(c) factors in order to make a complete determination of whether Respondent has any rights and legitimate interests in the disputed domain name.

 

Complainant contends that Respondent is not commonly known by the disputed domain name, despite that the website resolving from the disputed domain name purports to be operated by “Triacare Beauty Service Co., Ltd (HK).”  The WHOIS information for the disputed domain name lists the registrant as “Lei Zhou,” which has no relation to the disputed domain name.  Complainant argues that Respondent likely chose the purported business name of “Triacare Beauty Service Co., Ltd. (HK)” for its confusing similarity to Complainant’s name because Respondent uses the disputed domain name to sell counterfeit versions of Complainant’s products.  Therefore, Complainant contends that the existence of Respondent’s purported business name on its resolving website is insufficient to establish that Respondent is commonly known by the disputed domain name.  The Panel finds, therefore, that Respondent is not commonly known by the disputed domain name and accordingly lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the disputed domain name.”).

 

Complainant alleges that Respondent’s disputed domain name resolves to a website purporting to be owned by “Triacare Beauty Service Co., Ltd (HK)” and purporting to sell Complainant’s products.  The products sold through Respondent’s disputed domain name, however, are actually counterfeit versions of Complainant’s products.  The Panel finds that using a disputed domain name to operate a resolving website selling counterfeit versions of Complainant’s products is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii).  See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).

 

Complainant argues that Respondent attempts to pass itself off as Complainant at its website resolving from the disputed domain name.  Complainant asserts that Respondent chose a business name that incorporated Complainant’s key identifier, “Tria,” and also makes use of similar colors, layouts and product images as Complainant’s website.  Complainant also asserts that Respondent’s resolving website copies Complainant’s UK website entirely, changing out only the company names.  The Panel finds that Respondent’s efforts to fraudulently pass itself off as Complainant demonstrate that Respondent has no rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).

 

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

 

Registration and Use in Bad Faith

 

Respondent’s disputed domain name resolves to a website that attempts to pass itself off as Complainant and sell counterfeit versions of Complainant’s goods.  Internet users seeking Complainant’s goods and services will be diverted to the confusingly similar disputed domain name and may instead purchase counterfeit goods from Respondent’s resolving website.  The Panel finds that Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and is evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii).  See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”); 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) 

 

Complainant alleges that Respondent’s use of Complainant’s mark in the disputed domain name is intended to attract Complainant’s intending customers to Respondent’s website for Respondent’s commercial gain.  When Internet users arrive at Respondent’s site, they may easily be confused into believing that are at Complainant’s actual site due to Respondent’s frequent use of Complainant’s mark, the similar look and feel of Respondent’s resolving website, and the fact that Respondent purports to be selling Complainant’s authentic products.  The Panel finds that Respondent’s actions in this regard serve as evidence of Respondent’s bad faith registration and use according to Policy ¶ 4(b)(iv).  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).

 

Complainant contends that Respondent’s use of Complainant’s mark in the disputed domain name and on the resolving website, in addition to the design of the resolving website and the products purported to be offered there, is an attempt by Respondent to pass itself off as Complainant.  The Panel finds that Respondent’s efforts to pass itself off as Complainant serve as evidence of bad faith registration and use according to Policy     ¶ 4(a)(iii).  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).

 

Complainant argues that Respondent had actual notice of Complainant’s mark since Respondent placed an electronic version of Complainant’s user manual on Respondent’s resolving website.  The Panel finds that Respondent’s actual knowledge of Complainant’s mark supports a finding of bad faith registration and use under Policy ¶ 4(a)(iii).  See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).

 

The Panel finds 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 <triabest.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  June 2, 2010

 

 

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