FragranceX.com Inc. v. Tino Khong
Claim Number: FA1005001325236
Complainant is FragranceX.com Inc. (“Complainant”), represented by John
W. Dozier, of Dozier Internet Law, P.C., Virginia,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <fragrancexblog.com>, <fragrancexblog.net>, <fragrancexblog.info> and <fragrancexblog.org>, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 18, 2010.
On May 19, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <fragrancexblog.com>, <fragrancexblog.net>, <fragrancexblog.info> and <fragrancexblog.org> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@fragrancexblog.com, postmaster@fragrancexblog.net, postmaster@fragrancexblog.info, and postmaster@fragrancexblog.org. Also on May 24, 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 June 16, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <fragrancexblog.com>, <fragrancexblog.net>, <fragrancexblog.info> and <fragrancexblog.org> domain names are confusingly similar to Complainant’s FRAGRANCEX.COM mark.
2. Respondent does not have any rights or legitimate interests in the <fragrancexblog.com>, <fragrancexblog.net>, <fragrancexblog.info> and <fragrancexblog.org> domain names.
3. Respondent registered and used the <fragrancexblog.com>, <fragrancexblog.net>, <fragrancexblog.info> and <fragrancexblog.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, FragranceX.com Inc., commercially offers discount perfumes, colognes, skincare products, and cosmetic products under its FRAGRANCEX.COM mark from its official website resolving from the <FragranceX.com> domain name. Complainant registered the <FragranceX.com> domain name for its official website on April 21, 2001 and has made continuous use of its domain name since its registration. Complainant registered its FRAGRANCEX.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,365,121 issued January 8, 2008).
Respondent, Tino Khong, registered the <fragrancexblog.com> and <fragrancexblog.net> domain names on January 20, 2009, and the <fragrancexblog.info> and <fragrancexblog.org> domain names on January 21, 2009. The <fragrancexblog.com> domain name resolves to a website listing hyperlinks to third-party competitors of Complainant. The <fragrancexblog.net>, <fragrancexblog.info> and <fragrancexblog.org> domain names redirect Internet users to the website resolving from the <fragrancexblog.com> domain name.
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 its rights in the FRAGRANCEX.COM mark via its trademark registration with the USPTO (Reg. No. 3,365,121 issued January 8, 2008). The Panel finds Complainant has sufficiently established its rights in the mark pursuant to Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name); see also SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant alleges Respondent’s disputed domain names are
confusingly similar to its mark under Policy ¶ 4(a)(i). Complainant alleges that the <fragrancexblog.com> domain name
merely adds the generic term (“blog”) to Complainant’s mark. Complainant also alleges that the <fragrancexblog.net>, <fragrancexblog.info>
and <fragrancexblog.org> domain names also add a
generic term (“blog”) to its mark, remove the term “.com” and add generic
top-level domains (“gTLD”) (“.net,” “.info,” “.org”). The Panel finds these to be minor changes and
therefore find Respondent’s disputed domain names are confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Westfield
Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com>
domain name confusingly similar because the
Complainant has satisfied the elements of Policy ¶ 4(a)(i).
Complainant must present a prima facie case to the Panel that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Once this case has been established, the burden under this element of the Policy shifts to Respondent. The Panel chooses to infer from Respondent’s failure to respond to the proceedings that Complainant’s allegations are true. However, it is in the Panel’s discretion to review the evidence presented in the Complaint pursuant to Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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.”).
The WHOIS information for the <fragrancexblog.com>, <fragrancexblog.net>, <fragrancexblog.info> and <fragrancexblog.org> domain names list the registrant as “Tino Khong,” which the Panel finds indicates that the Respondent is not commonly known by the disputed domain names. Complainant asserts that it has not given authorization to Respondent for use of any element of Complainant’s FRAGRANCEX.COM mark. The Panel finds no evidence to contradict the argument of Complainant and finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Complainant alleges that Respondent’s <fragrancexblog.com> domain name
resolves to a website that displays hyperlinks to third-party websites of
Complainant’s competitors. Complainant
asserts that Respondent’s <fragrancexblog.net>, <fragrancexblog.info>
and <fragrancexblog.org> domain names redirect Internet
users to Respondent’s, <fragrancexblog.com>
domain name. Complainant also alleges
that Respondent receives referral fees when Internet users click on the
displayed third-party links. The Panel
finds that Respondent’s use of the disputed domain names to resolve to a
website which displays hyperlinks to third-party websites of Complainant’s
competitors is neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 24
Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For
Complainant has satisfied the elements of Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s <fragrancexblog.net>, <fragrancexblog.info>
and <fragrancexblog.org> domain names redirect Internet
users to Respondent’s <fragrancexblog.com>
domain name, which resolves to a website that displays advertisements for
Complainant’s competitors and links to third-party websites of Complainant’s
competitors. Complainant alleges that
Respondent’s disputed domain names divert Internet users seeking Complainant’s
business to competitors of Complainant in the online fragrance, skincare, and
cosmetics industry. The Panel finds that
this diversion by Respondent’s disputed domain names constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See David
Hall Rare Coins v.
Complainant further contends that Internet users, seeking
the goods and services provided by Complainant, may become confused as to
Complainant’s sponsorship of or affiliation with the website resolving from
Respondent’s disputed domain names.
Complainant alleges that Respondent profits from this confusion through
receipt of click-through fees when Internet users click on the displayed
advertisements and links to third-party competitors of Complainant. The Panel finds that commercial gain from a
likelihood of confusion constitutes bad faith registration and use by
Respondent of the <fragrancexblog.com>, <fragrancexblog.net>,
<fragrancexblog.info> and <fragrancexblog.org>
domain names pursuant to Policy ¶ 4(b)(iv). See
Complainant has satisfied the elements of 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 <fragrancexblog.com>, <fragrancexblog.net>, <fragrancexblog.info> and <fragrancexblog.org> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 29, 2010
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