TRIA Beauty, Inc. v. Li Qing c/o Li Qing Hua
Claim Number: FA1006001329372
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 <beautytria.com>, registered with HiChina.
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 June 10, 2010. The Complaint was submitted in both Chinese and English.
On June 12, 2010, HiChina confirmed by e-mail to the National Arbitration Forum that the <beautytria.com> domain name is registered with HiChina and that Respondent is the current registrant of the name. HiChina has verified that Respondent is bound by the HiChina 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 June 18, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 8, 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@beautytria.com by e-mail. Also on June 18, 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 July 13, 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 "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 <beautytria.com> domain name is confusingly similar to Complainant’s TRIA mark.
2. Respondent does not have any rights or legitimate interests in the <beautytria.com> domain name.
3. Respondent registered and used the <beautytria.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, TRIA Beauty, Inc., began offering its laser-based hair removal services in 1993. Complainant developed the first, at-home, laser-based hair removal system and marketed it under its TRIA mark. Specifically, Complainant named its new laser-based hair removal system TRIA BEAUTY. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its TRIA and related marks (e.g., Reg. No. 3,360,633 issued December 25, 2007).
Respondent, Li Qing c/o Li Qing Hua, registered the <beautytria.com> domain name on June 1, 2010. The disputed domain name resolves to a website that offers counterfeit versions of Complainant’s laser-based hair removal systems.
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 owns a trademark registration with the USPTO for
its TRIA mark (e.g., Reg. No.
3,360,633 issued December 25, 2007). The
Panel finds Complainant’s trademark registrations are sufficient to establish
rights in the TRIA mark under Policy ¶ 4(a)(i). See Miller Brewing
Complainant alleges that Respondent’s <beautytria.com> domain name is confusingly similar to Complainant’s TRIA mark. The disputed domain name contains Complainant’s entire mark and simply adds the descriptive term “beauty,” which directly relates to Complainant’s TRIA BEAUTY laser-based hair removal system. The disputed domain name also incorporates the generic top-level domain (“gTLD”) “.com.” The Panel determines the additions of a descriptive term and a gTLD fail to sufficiently distinguish the disputed domain name from Complainant’s mark. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also 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.”). Thus, the Panel concludes that Respondent’s <beautytria.com> domain name is confusingly similar to Complainant’s TRIA mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has contended that Respondent does not have any
rights or legitimate interests in the <beautytria.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove that it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a
sufficient prima facie case. Due to Respondent’s failure to respond to the
Complaint, the Panel may assume that Respondent does not have rights or legitimate
interests in the disputed domain name.
However, the Panel will examine the record to determine whether
Respondent has rights or legitimate interests in the disputed domain name under
Policy ¶ 4(c). See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc.,
D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires
that the Complainant prove the presence of this element (along with the other
two), once a Complainant makes out a prima facie showing, the burden of
production on this factor shifts to the Respondent to rebut the showing by
providing concrete evidence that it has rights to or legitimate interests in
the Domain Name.”); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the panel to draw adverse inferences from the respondent’s
failure to reply to the complaint).
Complainant claims that Respondent is not commonly known by the <beautytria.com> domain name. The WHOIS information identifies the domain name registrant as “Li Qing c/o Li Qing Hua,” which the Panel finds is not similar to the <beautytria.com> domain name. Additionally, Complainant alleges that Respondent is not affiliated with Complainant in any way. Respondent has failed to answer the Complaint or provide any evidence that would allow the Panel to determine that Respondent is commonly known by the disputed domain name. Consequently, based on the evidence in the record, the Panel concludes that Respondent is not commonly known by the <beautytria.com> 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 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) .
Complainant contends that Respondent uses the <beautytria.com>
domain name to resolve to a website that offers to sell counterfeit versions of
Complainant’s laser-based hair removal systems.
Complainant claims that Respondent also features Complainant’s TRIA mark
extensively on the resolving website and that the website consists of a similar
color scheme to Complainant’s official website.
The Panel finds Respondent’s use of a confusingly similar domain name to
offer a counterfeit version of Complainant’s product on a website similar to
Complainant’s official website does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
disputed domain name under Policy ¶ 4(c)(iii).
See Hewlett-Packard Co. v.
Inversiones HP Milenium
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <beautytria.com> domain name resolves to a website offering to sell counterfeit versions of Complainant’s laser-based hair removal systems. Internet users interested in purchasing Complainant’s hair removal products may instead purchase the counterfeit product from Respondent. This results in a loss of revenue for Complainant on the sale of the hair removal product and a potential future harm as Complainant may be associated with a counterfeit product that it did not manufacture. Respondent’s use of the confusingly similar disputed domain name causes this disruption of Complainant’s business. The Panel determines that Respondent’s use of the <beautytria.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Respondent presumably profits from the sale of counterfeit laser-based hair removal systems and is attempting to profit from Internet users’ confusion as to Complainant’s sponsorship of or affiliation with the disputed domain name, resolving website, and counterfeit products. Respondent increases the probability of this confusion by using a similar color scheme as Complainant’s official website and featuring Complainant’s TRIA mark extensively on the resolving website. Respondent’s attempt to profit from Internet users’ confusion constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
The Panel finds Policy ¶ 4(a)(iii) ahs been satisfied.
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 <beautytria.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: July 20, 2010
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