TRIA Beauty, Inc. v. Mike Wu
Claim Number: FA1006001331734
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 <lasertriaremoval.com>, registered with Tucows, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2010.
On June 25, 2010, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <lasertriaremoval.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 June 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 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@lasertriaremoval.com. Also on June 25, 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 July 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <lasertriaremoval.com> domain name is confusingly similar to Complainant’s TRIA mark.
2. Respondent does not have any rights or legitimate interests in the <lasertriaremoval.com> domain name.
3. Respondent registered and used the <lasertriaremoval.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, TRIA Beauty, Inc., sells laser-based hair removal systems. Complainant owns a trademark registration for its TRIA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,360,633 issued Dec. 25, 2007).
Respondent, Mike Wu, registered the <lasertriaremoval.com> domain name on April 5, 2010. The disputed domain name resolves to a website that aims to pass itself off as Complainant as it sells alleged counterfeit versions of Complainant’s products.
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 for its TRIA mark
with the USPTO (Reg. No. 3,360,633 issued Dec. 25, 2007). The Panel finds that registering a mark with
the USPTO provides conclusive evidence of Complainant’s rights in the TRIA mark
for the purposes of Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <lasertriaremoval.com> domain name is confusingly similar to Complainant’s TRIA mark. The disputed domain combines Complainant’s TRIA mark with the descriptive terms “laser” and “removal,” along with the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding words that describe Complainant’s business or products to Complainant’s mark does not create a disputed domain name that is distinct from Complainant’s mark according to Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also 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).”). The Panel also finds that addition of the gTLD “.com” does not differentiate the disputed domain name or prevent confusing similarity. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Thus, the Panel concludes that Respondent’s <lasertriaremoval.com> domain name is confusingly similar to Complainant’s TRIA mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
In keeping with the requirements of Policy ¶ 4(a)(ii), Complainant has put forth a prima facie case alleging that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has presented this prima facie case, the burden to demonstrate rights and legitimate interests transfers to Respondent. Respondent’s lack of a Response, however, indicates to the Panel that Respondent does not possess rights and legitimate interests in the disputed domain name and does not contest Complainant’s allegations. See 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.”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). In the interest of fairness, however, the Panel elects to consider the evidence in light of the Policy ¶ 4(c) to determine whether Respondent possesses any rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent is not commonly known by
the <lasertriaremoval.com>
domain name. Complainant asserts that no
relationship exists between Complainant and Respondent. The WHOIS information for the disputed domain
name lists the registrant of the disputed domain name as “Mike Wu,” failing to
indicate any association between Respondent and the disputed domain name. Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain name and consequently lacks rights
and legitimate interests pursuant to Policy ¶ 4(c)(ii). See 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); 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
contends that Respondent’s <lasertriaremoval.com>
domain name resolves to a website that mimics Complainant’s current website,
attempting to pass itself off as Complainant.
Complainant asserts that Respondent’s resolving website makes use of
Complainant’s TRIA mark, as well as the color scheme used on Complainant’s own
website and Complainant’s authentic product images. Complainant alleges that Respondent uses this
similar-looking website to sell laser hair removal products, which Complainant
alleges are counterfeit versions of Complainant’s products. The Panel finds that maintaining a website at
the disputed domain name that attempts to pass itself off as Complainant in
order to sell counterfeit versions of Complainant’s goods is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum
Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass
itself off as the complainant in order to advertise and sell unauthorized
products of 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 of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also
Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006)
(The panel found the respondent’s attempt to pass itself of as 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) when the respondent used the disputed domain name to present users
with a website that was nearly identical to the complainant’s website); see
also Hewlett-Packard Co. v. Inversiones HP Milenium
C.A., FA 105775 (Nat. Arb. Forum
Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name
[<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP]
products is not a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i).”).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant argues that Respondent sells counterfeit
versions of Complainant’s products at the <lasertriaremoval.com> domain name. As consumers who would ordinarily buy
Complainant’s products from Complainant’s website may instead buy Respondent’s
counterfeit products upon arriving at Respondent’s website, Respondent’s
business operations put it in the position of a competitor of Complainant and
disrupt Complainant’s business. In
addition to disrupting Complainant’s business by potentially reducing
Complainant’s sales, Respondent’s sale of the alleged counterfeit products also
disrupts Complainant’s business by negatively affecting Complainant’s product
image and reputation if the counterfeit versions do not function as effectively
as Complainant’s authentic products. The
Panel thus finds that Respondent’s registration and use of the disputed domain
name reveals bad faith under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock
Indus., Ltd., FA 724554 (Nat. Arb. Forum
Aug. 1, 2006) (finding that the respondent registered and used the
<classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶
4(b)(iii) by redirecting Internet users to the respondent’s competing website);
see also Lambros v. Brown,
FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent
registered a domain name primarily to disrupt its competitor when it sold
similar goods as those offered by the complainant and “even included
Complainant's personal name on the website, leaving Internet users with the
assumption that it was Complainant's business they were doing business with”).
Complainant alleges that Respondent uses Complainant’s TRIA
mark in the <lasertriaremoval.com>
domain name, includes the mark on the resolving website, and features the same
color scheme and product images as Complainant.
Complainant argues that Respondent does these things in order to attract
Complainant’s customers to Respondent’s website, pass itself off as
Complainant, and confuse Complainant’s customers, causing them to believe they
are doing business with Complainant.
Complainant contends that Respondent attempts to trade off Complainant’s
goodwill and reputation for Respondent’s own commercial gain by selling
products Respondent represents as Complainant’s products. The Panel finds these activities demonstrate
Respondent’s bad faith registration and use according to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of
the <saflock.com> domain name to offer goods competing with the
complainant’s illustrates the respondent’s bad faith registration and use of
the domain name, evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iv)); see also 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).
Complainant further asserts that Respondent’s activities in
connection with the <lasertriaremoval.com>
indicate that Respondent intended to pass itself off as Complainant. Complainant argues that its website’s layout,
color scheme, product images, and TRIA mark are all used by Respondent in
furtherance of this goal. Such as attempt
to defraud Internet users into believing that Respondent is Complainant is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA
101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of
<monsantos.com> to misrepresent itself as the complainant and
to provide misleading information to the public supported a finding
of bad faith); see also Vivendi Universal
Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that
where the complainant’s mark was
appropriated at registration, and a copy of the complainant’s website was used
at the domain name in order to facilitate the interception of the complainant’s
customer’s account information, the respondent’s behavior evidenced bad faith
use and registration of the domain name).
The Panel finds
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 <lasertriaremoval.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 2, 2010
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