TRIA Beauty, Inc. v. jinhui hong c/o hong jinhui
Claim Number: FA1004001319481
Complainant is TRIA Beauty, Inc. (“Complainant”), represented by Truman
H. Fenton, of King & Spalding LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <triagoods.com>, registered with Hichina Zhicheng Technology Ltd.
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 April 15, 2010. The Complaint was
submitted in both Chinese and English.
On Apr 19, 2010, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <triagoods.com> domain name is registered with Hichina Zhicheng Technology Ltd. and that Respondent is the current registrant of the name. Hichina Zhicheng Technology Ltd. has verified that Respondent is bound by the Hichina Zhicheng Technology 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 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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@triagoods.com. Also on April 27, 2010, the Chinese language 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 25, 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" 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <triagoods.com> domain name is confusingly similar to Complainant’s TRIA mark.
2. Respondent does not have any rights or legitimate interests in the <triagoods.com> domain name.
3. Respondent registered and used the <triagoods.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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, jinhui hong c/o hong jinhui, registered the disputed domain name on March 26, 2010. The disputed domain name resolves to a website incorporating contents identical to that found on Complainant’s own website and offering counterfeit versions of Complainant’s products for sale.
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 asserts rights in its TRIA mark based on its
registrations of the mark with the USPTO (e.g.,
Reg. No. 3,360,633 issued Dec. 25, 2007).
The Panel finds that Complainant’s registrations of its TRIA mark with
the USPTO are sufficient evidence of Complainant’s rights in the mark pursuant
to Policy ¶ 4(a)(i).
The Panel also finds that Complainant need not register its mark in the
country where Respondent resides or operates in order to establish rights in
the mark. See Reebok
Int’l Ltd. v.
Complainant argues that Respondent’s <triagoods.com> domain name is confusing
similar to Complainat’s TRIA mark.
Respondent’s disputed domain name incorporates the entirety of
Complainant’s mark and adds the generic term “good” and the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that the addition of a generic term creates a confusing similarity between the
disputed domain name and 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 Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat.
Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term
“collection” to Complainant’s HARRY POTTER mark failed to distinguish the
domain name from the mark). The Panel
also finds that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis and does not distinguish a disputed domain
name from a mark. See Jerry Damson, Inc. v.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <triagoods.com> disputed domain name. Policy ¶ 4(a)(ii) requires that Complainant establish a prima facie case against Respondent and once that occurs Respondent has the burden to prove it has rights or legitimate interests. In this instance, Complainant has presented a prima facie case, and Respondent has failed to respond to any of the allegations in the Complaint. As a result, the Panel may assume that Complainant’s allegations are true and 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.”). Nevertheless, the Panel will consider the evidence in the record to determine 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. The WHOIS
information lists the registrant of the disputed domain name as “jinhui hong c/o hong jinhui” which Complainant asserts
is not similar to the disputed domain name.
Without evidence in the record to the contrary, the Panel finds that
Respondent is not commonly known by the disputed domain name pursuant to Policy
¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also 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).
Complainant argues that Respondent’s disputed domain name
resolves to a website through which Respondent is selling counterfeit versions
of Complainant’s products. The Panel
finds that Respondent’s use of the confusingly similar disputed domain name to
sell counterfeit versions of Complainant’s products is not a use in connection
with a bona fide offering of goods
and services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones
HP Milenium
Complainant asserts that Respondent’s disputed domain name resolves
to a website that closely resembles Complainant’s own website and incorporates
similar color schemes, layouts, as well as images of Complainant’s
products. Complainant further asserts
that the resolving website also purports to be owned by “Triacare Beauty
Service Co., Ltd (HK)” and is a specific attempt by Respondent to create an
association between Complainant and the disputed domain name. Complainant also argues that Respondent’s
disputed domain name fully incorporates Complainant’s
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
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 purchase counterfeit goods from Respondent rather than purchasing goods from Complainant. 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 argues that Respondent is using Complainant’s TRIA mark in the confusingly similar disputed domain name to attract Complainant’s potential customers to Respondent’s website for Respondent’s commercial gain. Internet users a may easily be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s site and believe that Respondent’s disputed domain name is legitimately associated with Complainant. The Panel finds that Respondent’s use of the confusingly similar disputed domain name is 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).
As discussed previously, Complainant alleges that Respondent is using content and images from Complainant’s own website at the website resolving from the disputed domain name in an attempt to pass itself off as Complainant. The Panel finds that Respondent’s attempt to pass itself off as Complainant is further evidence of bad faith registration and use according to Policy ¶ 4(a)(iii). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”); 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”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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 <triagoods.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 3, 2010
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