TRIA Beauty, Inc. v. SpectraGenics, Inc c/o John Webber
Claim Number: FA1004001319482
Complainant is TRIA Beauty, Inc., represented by Truman H. Fenton, of King & Spalding LLP (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lasertria.com>, registered with Directi Internet Solutions Pvt. 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2010.
On April 19, 2010, Directi Internet Solutions Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <lasertria.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. has verified that Respondent is bound by the Directi Internet Solutions Pvt. 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 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 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@lasertria.com by e-mail. Also on April 23, 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 21, 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 "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:
Complainant is manufacturer and producer of beauty products, specifically laser-based hair removal systems.
Complainant’s products are available in many retail locations, and directly from Complainant’s official <triabeauty.com> website as well as QVC and third-party <amazon.com>.
Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its TRIA mark (including Reg. No. 3,360,633, issued December 25, 2007).
Respondent registered the <lasertria.com> domain name on April 23, 2009.
Respondent’s domain name resolves to a website that offers counterfeit and unauthorized versions of Complainant’s laser hair removal products.
Respondent’s <lasertria.com> domain name is confusingly similar to Complainant’s TRIA mark.
Respondent has not been authorized to use Complainant’s mark, and Respondent is not commonly known by the disputed domain name.
Respondent has assumed the name “SpectraGenics, Inc.”, which was Complainant’s previous corporate name, to give the appearance that it is the rightful owner of Complainant’s trademark registration.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
Rather Respondent is using the disputed domain name to sell counterfeit or otherwise unauthorized versions of Complainant’s laser hair removal systems.
Respondent’s behavior creates confusion among Internet users as to the possibility of Complainant’s affiliation with or sponsorship of the resolving website, so that such users are falsely led to believe that they are purchasing Complainant’s products, all to the commercial benefit of Respondent and the detriment of Complainant.
Respondent does not have any rights to or legitimate interests in the <lasertria.com> domain name.
Respondent’s display of counterfeit and unauthorized goods by means of the disputed domain name results in disruption of Complainant’s business.
Respondent registered and uses the <lasertria.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 TRIA mark under Policy ¶ 4(a)(i) through its trademark registrations 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, complainant has met the
requirements of Policy ¶ 4(a)(i).
See also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006): “Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”
Respondent’s <lasertria.com> domain name is confusingly similar to Complainant’s TRIA mark. The addition of the generic term “laser”, which is descriptive of Complainant’s business, and of the generic top-level domain (“gTLD”) “.com”, to the TRIA mark in forming the disputed domain name does not make the domain name distinct from Complainant’s mark for purposes of the Policy. The disputed domain name is therefore confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described a complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish a respondent’s domain name from a complainant’s mark under Policy ¶ 4(a)(i)); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name …, namely the trademark SONY.”
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <lasertria.com> domain name. Complainant is required to make out a prima facie case in support of this allegations. Once Complainant has produced a prima facie case, the burden shifts to Respondent to show that it possesses rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:
complainant must first
make a prima facie case that
respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii), and then the burden shifts to 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.”
Complainant has produced a prima facie case. Owing to
Respondent’s failure to respond to these proceedings, we may presume that Respondent
does not have any rights to or legitimate interests in the disputed domain
name. 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 a respondent fails to respond).
Nonetheless, we will examine the record before us, in light of the criteria set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant submits, and Respondent does not deny, that Respondent has not been authorized to use Complainant’s mark and that Respondent is not commonly known by the disputed domain name. Moreover, the WHOIS information for the <lasertria.com> domain name identifies the registrant only as “SpectraGenics, Inc. c/o John Webber”. It appears from the Complaint that Respondent has assumed the name “SpectraGenics, Inc.”, which was Complainant’s previous corporate name, to give the appearance that it is the rightful owner of Complainant’s trademark registration.
Despite this false appearance, we conclude from the complete evidence of record that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no credible evidence in the record, including the pertinent WHOIS information, suggesting that that respondent was in fact commonly known by a disputed domain name).
Complainant further argues that Respondent is not using the
disputed domain name in connection with a bona
fide offering of goods or services, but is instead employing the disputed
domain name to sell counterfeit or otherwise unauthorized versions of
Complainant’s laser hair removal systems.
Complainant argues in addition that the confusion caused to Internet
users as to the possibility of Complainant’s affiliation with or sponsorship of
the website leads Internet users to believe they are purchasing Complainant’s
products, all to the commercial benefit of Respondent and the detriment of
Complainant. Respondent does not deny
these assertions. We therefore conclude that
Respondent’s use of the disputed domain name to sell counterfeit and
unauthorized versions of Complainant’s products as if it were Complainant is
not a use 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 Kmart of
Respondent’s use of the confusingly similar
domain name to sell counterfeit versions of Complainant’s products is not a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues, without objection from Respondent, that Respondent’s display of counterfeit and unauthorized goods by means of the disputed domain name results in disruption of Complainant’s business. We therefore agree, and conclude that Respondent’s use of the disputed domain name to divert Internet users seeking Complainant’s products to Respondent’s website in order to sell counterfeit and unauthorized versions of Complainant’s products is evidence of bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring from a respondent to a complainant the <fossilwatch.com> domain name, that respondent being a watch dealer not authorized to sell that complainant’s goods,); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that a respondent acted in bad faith by attracting Internet users to a website that competed with a complainant’s business).
Complainant also contends that Respondent’s sale of
counterfeit products, mimicking those of Complainant, via the contested domain
name results in Respondent’s illicit commercial gain. Respondent does not contest this
allegation. In these circumstances, we further
conclude that Respondent’s use of the disputed domain name to attract Internet
users to the resolving website for commercial gain by selling unauthorized
versions of Complainant’s products is evidence of bad faith registration and
use under Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS,
FA 98067 (Nat. Arb. Forum Aug. 23,
2001) (finding bad faith where a respondent used a disputed domain name to sell
a complainant’s products without permission and to mislead Internet users by
implying that that respondent was affiliated with that complainant); see also Compaq
Info. Techs. Group, L.P. v.
Waterlooplein Ltd., FA 109718 (Nat. Arb.
Forum May 29, 2002) (finding that a respondent’s use of the
<compaq-broker.com> domain to sell a complainant’s products “creates a
likelihood of confusion with Complainant's COMPAQ mark as to the source,
sponsorship, or affiliation of the website and constituted bad faith pursuant
to Policy ¶ 4(b)(iv)”).
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 shall be GRANTED.
Accordingly, it is Ordered that the <lasertria.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 4, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum