philosophy, Inc. v. Gary Anderson
Claim Number: FA1005001323004
Complainant is philosophy, Inc. (“Complainant”), represented by David
G. Barker, of Snell & Wilmer L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <philosophybodywash.com>, registered with GoDaddy.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2010.
On May 6, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <philosophybodywash.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 May 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 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@philosophybodywash.com. Also on May 7, 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.
The National Arbitration Forum received an Additional Submission from the Complainant on May 28, 2010. The Additional Submission was received in a timely fashion.
Having received no proper response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 4, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <philosophybodywash.com> domain name is confusingly similar to Complainant’s PHILOSOPHY mark.
2. Respondent does not have any rights or legitimate interests in the <philosophybodywash.com> domain name.
3. Respondent registered and used the <philosophybodywash.com> domain name in bad faith.
B. Respondent failed to submit a proper response in this proceeding. On May 20, 2010 Respondent sent an email to the Forum stating “Please note this website has now been removed. The purpose of this site was merely to promote, as an affiliate, Philosophy products. No income was earned from this site.” Respondent’s email does not rebut the allegations of the complaint and is not a proper response under the Rules.
Complainant is a cosmetics and skin care products company that promotes its products under the PHILOSOPHY mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on November 12, 1996 (Reg. No. 2,016,208).
Respondent registered the <philosophybodywash.com> domain name on January 4, 2010. The disputed domain name resolves to a website that contains the PHILOSOPHY mark and links to third-party websites that compete with Complainant.
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 Complainant has established sufficient
rights in the PHILOSOPHY mark pursuant to Policy ¶ 4(a)(i)
through registration of the mark with the USPTO (Reg. No. 2,016,208 issued November
12, 1996).
Complainant argues that Respondent’s <philosophybodywash.com> domain name is confusingly
similar to Complainant’s PHILOSOPHY mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name differs
from Complainant’s PHILOSOPHY mark in two ways: 1) the descriptive term
“bodywash” has been added to the mark; and 2) the generic top-level
domain (“gTLD”) “.com”
has been added to the mark. The Panel finds that adding a descriptive term to a mark
creates a confusing similarity between the disputed domain name and the
complainant’s mark. See Gillette Co. v.
RFK Assocs., FA 492867 (Nat.
Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,”
which described the complainant’s products, and the generic top-level domain
“.com” were insufficient to distinguish the respondent’s
<duracellbatteries.com> from the complainant’s DURACELL mark); see also Constellation Wines U.S., Inc. v.
Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb.
Forum May 16, 2007) (finding that the addition of the descriptive term “wine”
to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain
name was insufficient to distinguish the mark from the domain name under Policy
¶ 4(a)(i)). In addition, the Panel finds
that the addition of a gTLD is irrelevant in distinguishing a disputed domain
name from a registered mark. See Reese v. Morgan, FA 917029 (Nat.
Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic
top-level domain “.com” is insufficient to differentiate a disputed domain name
from a mark); see also Gardline Surveys Ltd.
v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”).
Therefore, the Panel finds that Respondent’s <philosophybodywash.com> domain name is confusingly similar to Complainant’s PHILOSOPHY
mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has sufficiently met its burden of producing a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Therefore, it is Respondent’s responsibility to repudiate Complainant’s assertion and provide evidence that Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). However, Respondent has failed to respond to the Complaint. Consequently, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name. Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). The Panel will nevertheless examine the record in consideration of the factors cited under Policy ¶ 4(c).
Respondent has
offered no evidence, and there is no evidence in the record, suggesting that
Respondent is commonly known by the disputed domain name.
Complainant asserts that Respondent is not authorized to use the
PHILOSOPHY mark. The WHOIS information
identifies the domain name registrant as “Gary Anderson.” Therefore, the Panel finds that Respondent has
not established rights or legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum
Dec. 7, 2006) (finding that the respondent failed to establish rights and
legitimate interests in the <emitmortgage.com> domain name as the
respondent was not authorized to register domain names featuring the
complainant’s mark and failed to submit evidence of that it is commonly known
by the disputed domain name); see also 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).
Respondent’s disputed
domain name resolves to a website featuring click-through links and
advertisements for Complainant’s competitors. The Panel finds that Respondent’s
use of the disputed domain name
to redirect Internet users to Complainant’s competitors, presumably for
financial gain, does not constitute 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 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using
a confusingly similar domain name to divert Internet users to competing
websites does not represent 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website featuring links to Complainant’s competitors. The confusingly similar <philosophybodywash.com> domain name (registered January 4, 2010) likely attracts Internet users that are attempting to access Complainant’s website, and redirects them to the websites of Complainant’s competitors. Therefore, the Panel finds that Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business, which 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).”).
In addition, Respondent is using the disputed domain name to intentionally divert
Internet users to the associated website, which displays third-party links to
competing websites. In cases such as
this, the Panel presumes that Respondent is collecting click-through fees and
attempting to profit by creating a likelihood of confusion between
Complainant’s PHILOSOPHY mark and the confusingly similar disputed domain
name. The Panel finds that Respondent’s
use of the disputed domain name is further evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that the respondent engaged in bad faith
registration and use by using a domain name that was confusingly similar to the
complainant’s mark to offer links to third-party websites that offered services
similar to those offered by the complainant); see also
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 <philosophybodywash.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 10, 2010
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