TRIA Beauty, Inc. v. Xu Bao Rong c/o Xu Bao
Claim Number: FA1007001336978
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 <triachina.com>,
registered with HiChina ZhiCheng Technology 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2010. The Complaint was submitted in both Chinese and English.
On July 25, 2010, HiChina ZhiCheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <triachina.com> domain name is registered with HiChina ZhiCheng Technology Ltd. and that Respondent is the current registrant of the name. HiChina ZhiCheng Technology Ltd. has verified that Respondent is bound by the HiChina ZhiCheng Technology 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 July 30, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 19, 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@triachina.com. Also on July 30, 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 August 25, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <triachina.com> domain name is confusingly similar to Complainant’s TRIA mark.
2. Respondent does not have any rights or legitimate interests in the <triachina.com> domain name.
3. Respondent registered and used the <triachina.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, TRIA Beauty, Inc., holds trademark registrations for its TRIA mark in connection with laser-based hair removal systems. Complainant owns multiple trademark registrations for the TRIA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,360,633 issued December 5, 2007).
Respondent, Xu Bao Rong c/o Xu Bao, registered the <triachina.com> domain name on March 16, 2010. The disputed domain name resolves to a commercial website which purportedly sells counterfeit versions of Complainant’s laser hair-removal 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 multiple trademark registrations with the
USPTO for the TRIA mark (e.g., Reg.
No. 3,360,633 issued December 25, 2007).
The Panel finds that USPTO trademark registrations are conclusive
evidence of Complainant’s rights in the TRIA mark according to Policy ¶ 4(a)(i), regardless of whether Respondent operates in a
different country. See Reebok Int’l Ltd. v.
Complainant contends that Respondent’s <triachina.com> domain name is
confusingly similar to Complainant’s TRIA mark because Respondent’s disputed
domain name fully incorporates Complainant’s mark and makes only two
modifications: it adds the geographic
descriptor “china” and appends the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a
geographic term does not create a domain name distinct from Complainant’s
mark. See Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic
terms, such as “cancun” to the end of the CHEAPTICKETS mark in the
<cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>,
and <cheapticketscancun.org> domain names, does not overcome a finding of
confusing similarity under Policy ¶ 4(a)(i)); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it
is well established that a domain name consisting of a well-known mark,
combined with a geographically descriptive term or phrase, is confusingly
similar to the mark.”). The Panel also
finds that the addition of a gTLD is immaterial to a Policy ¶ 4(a)(i) analysis and serves no distinguishing function. See Jerry Damson, Inc. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent does not possess rights or legitimate interests in the <triachina.com> domain name. Policy ¶ 4(a)(ii) requires that Complainant establish a prima facie case against Respondent before Respondent is faced with the burden to prove its rights and legitimate interests. In this instance, Complainant has adequately presented a prima facie case, but Respondent has failed to respond. As a result, the Panel may assume that Complainant’s allegations are true in that Respondent lacks rights and legitimate interests in the disputed domain name. See 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.’”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). The Panel elects, however, to consider the evidence in light of the Policy ¶ 4(c) factors in order to make a complete determination on whether Respondent has any rights and legitimate interests in the disputed domain name.
Complainant contends that Respondent has no legitimate or authorized relationship with Complainant. The WHOIS information for the disputed domain name lists the registrant as “xu bao,” a name with no apparent relationship to the disputed domain name. Complainant asserts that Respondent’s purported business name as noted on the resolving website, “TRIA E-Commerce Co., Ltd. of China,” is not sufficient evidence that Respondent is commonly known by the disputed domain name or that Respondent has rights and legitimate interests because the name was likely chosen for its confusing similarity to Complainant’s mark. The Panel finds, therefore, that Complainant is not commonly known by the disputed domain name and does not possess rights or legitimate interests in the <triachina.com> domain name according to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the disputed domain name.”).
Complainant alleges that Respondent’s <triachina.com> domain name resolves
to a website purporting to be owned by “TRIA E-Commerce Co., Ltd. of
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent’s <triachina.com> domain name resolves to a website that displays the TRIA mark and sells counterfeit versions of Complainant’s goods to unknowing Internet users. Respondent’s sale of goods purporting to be Complainant’s thus competes with Complainant’s sale of its actual goods and disrupts Complainant’s business by diverting Complainant’s intending customers to Respondent’s fraudulent website. The Panel finds that Respondent’s use of the disputed domain name is therefore evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii). See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant’s business of authorizing dealers to sell its CATERPILLAR equipment.”); see also 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).
Complainant contends that Respondent’s use of Complainant’s TRIA mark in the <triachina.com> domain name is intended to attract Complainant’s intending customers to Respondent’s website for Respondent’s commercial gain. When Internet users arrive at Respondent’s site, they may easily be confused into believing that Respondent’s website is affiliated with Complainant. The Panel finds that Respondent’s actions in appropriating Complainant’s mark in order to attract and confuse Internet users and then subsequently profit serve as evidence of bad faith registration and use according to Policy ¶ 4(b)(iv). See 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); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant argues that Respondent had actual notice of
Complainant’s mark when it registered the <triachina.com> domain name.
When an Internet user purchases a product from Respondent’s website, the
counterfeit product includes a pamphlet entitled “Instructions for Use,” which
states on the bottom back cover that “TRIA and the TRIA logo are trademarks of
SpectraGenics, Inc.” As “SpectraGenics,
Inc.” is the former name of Complainant, this statement is evidence that
Respondent had actual notice of Complainant’s rights in the TRIA when
Respondent registered the disputed domain name.
The Panel finds that this is further evidence of Respondent’s bad faith
registration and use under Policy ¶ 4(a)(iii). See Yahoo! Inc. v.
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 <triachina.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 30, 2010
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