Liza Wong v. Timothy Schmidt / South Beach Herbals
Claim Number: FA1101001367897
Complainant is Liza Wong (“Complainant”), represented by Liza Wong, California, USA. Respondent is Timothy Schmidt / South Beach Herbals (“Respondent”), represented by James A. Italia of Italia IP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <eliteskin.com> registered with MONIKER ONLINE SERVICES, INC. and <eliteskin.net> registered with GoDaddy.com, 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.
Timothy D. O’Leary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2011; the National Arbitration Forum received payment on January 17, 2011.
On January 19, 2011, GoDaddy.com, Inc., confirmed by e-mail to the National Arbitration Forum that the <eliteskin.net> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 20, 2011, MONIKER ONLINE SERVICES, INC., confirmed by e-mail to the National Arbitration Forum that the <eliteskin.com> domain name is registered with MONIKER ONLINE SERVICES, INC., and that Respondent is the current registrant of the name. MONIKER ONLINE SERVICES, INC. has verified that Respondent is bound by the MONIKER ONLINE SERVICES, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2011 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@eliteskin.com and postmaster@eliteskin.net. Also on January 28, 2011, 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.
A timely Response was received and determined to be complete on February 18, 2011.
An Additional Submission was received on February 22, 2011, and it was timely.
On February 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Timothy D. O’Leary as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
I. Complainant’s Contentions
A. Identical or Confusingly Similar
eliteskin.com and eliteskin.net domain name are essentially identical or confusingly similar to a registered trademark or service mark of Elite Skin Care in which the Complainant has registered trademark rights with the U.S. Trademark and Patent office since 2004. By virtue of the long use and investment in the ELITE SKIN CARE trademark in promotion and operation of Complainant’s business, the ELITE SKIN CARE trademark has come to be a well recognized and valuable assets for Complainant. Complainant has extensively promotes its ELITE SKIN CARE Marks through print and web-based advertising.
The Letter of Protests Memorandum from United States Patent & Trademark Office in which the United States Patent & Trademark Office has determined that the information submitted by Complainant is relevant and supports a reasonable ground for refusal of Respondent’s EliteSkin trademark application since the granting of trademark rights of EliteSkin to the Respondent can cause possible likelihood of confusion with Complainant’s registered trademark. As of the filing date of this complaint, Respondent’s EliteSkin trademark application status has been denied by the United States Patent & Trademark Office and the application status is considered dead by the United States Patent & Trademark Office due to Respondent’s abandonment. Please refer to Item V from the Table of Contents the United States Patent & Trademark Office Notice of Abandonment in regards to Respondent’s EliteSkin trademark application.
Respondent has registered the domain name <eliteskin.com> and <eliteskin.net> which mirrors Complainant’s ELITE SKIN CARE trademark. With regards to Respondent’s registration of the domain name <eliteskin.com> and <eliteskin.net>, the deletion of the descriptive and generic word “care” fails to sufficiently distinguish the disputed domain name from Complainant’s ELITE SKIN CARE mark. It is a suffix of no weight, nor note. There is also clear evidence that the only use that could be made of the disputed domain names are the confusion of Internet users.
B. Rights and Legitimate Interests
Respondent through his company Beach Marketing and Skin Pro International, that use the EliteSkin name should be considered as having no rights or legitimate interests in respect to the domain name eliteskin.com and eliteskin.net since ELITE SKIN CARE is a registered Trademark owned by Complainant and is the subject of the complaint.
The Letter of Protests Memorandum from United States Patent & Trademark Office in which the United States Patent & Trademark Office has determined that the information submitted by Complainant is relevant and supports a reasonable ground for refusal of Respondent’s EliteSkin trademark application since the granting of trademark rights to the name of EliteSkin can cause possible likelihood of confusion with Complainant’s registered trademark. As of the filing date of this complaint, Respondent’s EliteSkin trademark application status has been denied by the United States Patent & Trademark Office and the application status is considered dead by the United States Patent & Trademark Office due to Respondent’s abandonment. Please refer to Item V from the Table of Contents the United States Patent & Trademark Office Notice of Abandonment in regards to Respondent’s EliteSkin trademark application.
Respondent is using the disputed domain names to resolve to a website featuring products that directly compete with those offered under the ELITE SKIN CARE mark and compete with products offered through Complainant’s <eliteskincare.com> website. Respondent’s website, featured products that are in direct competition with Complainant’s skin care products; namely, moisturizers and serums. Respondent is using the EliteSkin name and has no registered trademark legal rights to the name of EliteSkin.
Respondent’s use has tarnished and diluted the ELITE SKIN CARE Mark. Respondent has diminished consumers’ capacity to associate the ELITE SKIN CARE Mark with the quality products offered under the ELITE SKIN CARE Mark by Complainant by using the ELITE SKIN CARE Mark in association products and services not associated with or related to Complainant’s quality branded products. Respondent’s use creates the very real risk that Complainant’s trademarks are not only being associated with numerous products and services not related to Complainant’s branded products, but also to products and services over which Complainant has no quality control.
C. Registration and Use in Bad Faith
eliteskin.com and eliteskin.net have been registered by the Respondent and being used in bad faith in order to prevent Complainant, the owner of the registered trademark of ELITE SKIN CARE from reflecting the mark in a corresponding domain name.
Respondent intentionally used the Mark without consent from Complainant. Respondent was put on constructive notice of Complainant’s rights in the ELITE SKIN CARE Mark through Complainant Federal Trademark Registrations, most of which predate the date on which Respondent acquired the <eliteskin.com> and <eliteskin.net> domain, as well as Complainant’s extensive use of its ELITE SKIN CARE Mark. The extensive prior use of that name and the fact that it comprises the registered trademarks provided constructive knowledge of the Complainant’s trademark rights. Further, Complainant also sent a Cease and Desist Letter to Respondent to notify Respondent that the use of EliteSkin infringes on the Complainant’s registered Trademark of ELITE SKIN CARE. Therefore, Respondent knowingly and intentionally used the EliteSkin mark is in violation of Complainant’s rights in the ELITE SKIN CARE Mark.
Respondent is using the disputed domain names to resolve to a website featuring products that directly compete with those offered under the ELITE SKIN CARE mark and compete with those offered through Complainant’s<eliteskincare.com> website. Respondent’s website <eliteskin.com and eliteskin.net> featured products that are in direct competition with Complainant’s skin care products; namely, moisturizers and serums. This can only have the effect of confusing visitors to its website and making them think that they are being linked to Complainant’s site. Even if searchers discover they are not at Complainant’s site, searchers may be led to believe that Complainant endorsed, sponsored or affiliated themselves with the good and services offered at the <eliteskincare.com> website. Such use cannot be considered fair. The use of a domain name that is deceptively similar to a trademark to obtain revenue is found to be bad faith use. Respondent uses the Marks intentionally in its domain name to attract Internet searchers by creating a likelihood of confusion with Complainant’s ELITE SKIN CARE Marks and such intentional action, alone, is strong evidence of its bad faith.
Respondent had registered the domain name eliteskin.com and eliteskin.net primarily for the purpose of disrupting the business of a competitor are making use of the domain name with the intent for commercial gain to misleadingly divert consumers.
By using eliteskin.com and eliteskin.net, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
II. Respondent’s Contentions
A. Identical or Confusingly Similar
Respondent, through its legal entity, Skin Pro International, Inc. markets and sells skin care products under the “EliteSerum” and “EliteSkin” marks, collectively referred to herein as the ELITE mark at its domains in question: eleliteskin.com and eliteskin.net.
Complainant is the owner of United States Trademark Registration No. 2821236, which covers the ELITE SKIN CARE mark in International Class 044 for “skin care salon services.” The mark was registered on March 9, 2004. Complainant’s mark, however, is not registered in International Class 003, the appropriate class for the protection of skin care products.
Respondent filed a trademark application in the United States Patent &Trademark Office in December 24, 2009 to protect its ELITESKIN mark in International Class 03 for use in connection with “cosmetic creams for skin care.” The application received an office action that was mailed on March 30, 2010. In that office action, the examiner refused the registration under Section 2(d) because of a likelihood of confusion with the registered mark ELITE MODEL STUDIO (U.S. Registration No. 2878307 ) for use in connection with a variety of goods including: skin cleansing milk for toilet purposes, cosmetics, cosmetic kits composed of lipstick and blush, cosmetic preparations for the bath namely; bath beads, bath crystals, bath foam, bath gel, bath lotion, bath oil, bath pearls, bath powder, non-medicated bath salts, and bubble bath, sun screen preparations, cosmetic sun tanning preparations, and beauty masks, all not for medical purposes.
In the office action, the United States Patent & Trademark Office did not reference Complainant’s registration as a basis for likelihood of confusion. Instead, it only cited references that included International Class 03 relating to skin care goods. As such, the examiner clearly felt that Complainant’s registered mark was not confusingly similar to Respondent’s ELITESKIN mark because it only covered services and not goods.
Further, Complainant had sent to the United States Patent & Trademark Office a letter of protest for the purpose of informing the USPTO of Complainant’s registered mark. As such, the USPTO was clearly aware of Complainant’s mark and yet, the examiner did not even cite it as a potentially confusingly similar mark.
In summary, if the USPTO did not feel that that there was a likelihood of confusion between the ELITESKIN and ELITE SKIN CARE marks then, it should be found that the eliteskin.com and eliteskin.net domains are not confusingly similar to Complainant’s mark now.
B. Rights and Legitimate Interests
Respondent, through its legal entity, Skin Pro International, Inc. markets and sells skin care products under the “EliteSerum” and “EliteSkin” marks, collectively referred to herein as the ELITE mark at its domains in question: eleliteskin.com and eliteskin.net.
Respondent has manufactured and sold its skin care related products bearing the ELITE mark since at least as early as May of 2009.
Respondent is informed and believes that Complainant ordered her first skin care product from the parties’ common manufacturer Cosmetic Solutions, Inc. (the parties utilize the same manufacturer for their products and each privately label their brands) bearing the ELITE SKIN CARE mark on or about September of 2009 and did not begin selling or marketing skin care products under the ELITE SKIN CARE mark until after that date. In contrast, Respondent’s first use in commerce of a skin care product bearing its ELITE mark is as early as May 23, 2009.
Complainant’s first use in commerce of the ELITE SKIN CARE mark associated with use of its own private label did not take place until at least after April 2009, and given the above information and web archive data available, it is likely after September 2009.
In summary, Respondent used the ELITE mark with skin care goods before Complainant and therefore has a genuine claim to the ELITE mark and the eliteskin.com and eliteskin.net domains for that purpose. So much so in fact, Respondent has filed a complaint in Federal Court for Common Law Trademark Infringement, False Designation of Origin, Unfair Competition, and Tortious Interference with Prospective Economic Advantage against Complainant.
C. Registration and Use in Bad Faith
Respondent, through its legal entity, Skin Pro International, Inc., has manufactured and sold its skin care related products bearing the “Elite” marks since at least as early as May of 2009. Since its initial introduction of its skin care products under the ELITE mark, Respondent has sold in excess of 25,000 units, resulting in sales in excess of $700,000.
Skin care products sold under Respondent’s ELITE mark include: “Elite HGF Youth Elixir,” “Age Defying System,” “DNA Rejuvenation System,” “Elite VCovery Cream,” “Elite Eye Serum,” “Elite Cryogenic Moisturizer,” “Elite Telomere Cell Cream,” “Elite Neck & Chest V-Covery,” “Elite Wrinkle Eraser,” “Elite Cellulite Repair” and “Elite Ultra Cleanser.”
Respondent has made and continues to make a substantial investment of time, effort, and expense in the marketing of its products utilizing the ELITE mark on its lines of skin care products. Respondent advertises its ELITE skin care products over the World Wide Web to the general public and distributors through its websites, www.eliteserum.com, www.eliteskin.com and www.eliteskin.net.
Furthermore, Respondent produces and distributes a multi-color product catalog. The approximate annual budget that Respondent commits to the advertising and marketing of its ELITE skin care products is $268,000.
Respondent established a successful “Facebook” page on or about August of 2010 that it utilized to advertise and promote its ELITE skin products by interacting with its customers and providing promotional codes. In just two months Respondent’s Facebook page had over 3,000 followers.
Respondent’s ELITE skin care products have also been featured in internet, newspaper, and website articles.
Skin care products sold under Respondent’s ELITE mark have been sold with the help of distributors throughout the world with international distributors from Europe and Asia. These distributors’ display and offer for sale the skin care products bearing the ELITE mark to members of the general public.
Respondent’s ELITE lines of skin care products have had outstanding commercial success. As a result, manufacturers, distributors and the public recognize Respondent’s ELITE lines and the ELITE mark as designating an exclusive source, thereby creating a goodwill which inures to Respondent’s benefit.
Further, based on information received by the Complainant’s and Respondent’s mutual manufacturer of their skin care products, Cosmetic Solutions, Inc., Respondent was actually selling skin care products under the ELITE marks before Complainant. In addition, based on information received by the parties’ mutual manufacturer, Respondent’s purchases roughly 100 times more product than Complainant. In addition Respondent’s advertising budget and promotional activities dwarfs that of Complainant.
In summary, Respondent did not register the domains in bad faith or to disrupt the business of Complainant. As the record clearly shows, the domains are used by Respondent in operating a legal business that it has worked very hard to establish and build. If anything, Complainant is reaping the benefits from Respondent’s efforts rather than receiving any harm.
III. Complainant’s Additional Submission
Respondent Has No Rights Or Legitimate Interests In The Domain Names That Are The Subject Of This Complaint.
A. Complainant's Registration For Skin Care Services Supports A Finding Of A Likelihood Of Confusion Between Complainant's Services And Respondent's Goods
Respondent asserts that Complainant has no rights in connection with its ELITE SKIN CARE mark and skin care products because its federal trademark registration (U.S. Registration No. 2,821,236) is for skin care services in International Class 44, and not skin care products in International Class 3. Respondent's argument is entirely without merit.
The courts and the U.S. Patent and Trademark Office Trademark Trial and Appeal Board ("the TTAB") have routinely and consistently held that a likelihood of confusion can be found between marks where one is used for goods and the other for services, provided the respective goods and services were sufficiently related such that consumers will believe that the two emanate from the same source:
It is well recognized that confusion in trade is likely to occur from the use of similar or the same marks for goods and products on the one hand, and for services involving those goods and products on the other.
Steelcase, Inc. v. Steelcare, Inc., 219 USPQ 433 (T.T.A.B. 1983) (holding confusion is likely between STEELCARE for furniture refinishing services and STEELCASE for office furniture). See also Giant Food, Inc. v. Nation's Foodservice, Inc., 70 F.2d 1565, 218 USPQ 390 (Fed Cir. 1983) (confusion held likely between GIANT FOOD for supermarket services and GIANT for fast-food hamburgers).
In other words, "related" does not require that there be a physical relationship between the goods or services identified by the conflicting marks; they simply have to be "related" in the mind of the consuming public. It is only necessary that the goods and/or services be sufficiently related such that consumers are likely to believe that they emanate from the same source. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565 (Fed. Cir. 1984). In fact, courts have held that confusion is likely in cases where goods and services are not competitive, but complementary. See In re Opus One, Inc., 60 USPQ2d 1812, 2001 WL 1182924 (T.T.A.B. 2001) (holding confusion is likely between "wine" and "restaurant services").
Here, there can be no dispute that skin care services and skin care products are complementary and related in the minds of the consuming public. Certainly, the consuming public would expect a provider of skin care services to also provide skin care products. In fact, the U.S. Patent and Trademark Office ("PTO") has registered more than 660 marks that include both skin care or cosmetic products and services. These registrations plainly illustrate the reality that skin care goods and services travel in the same channels of trade, and the resulting likelihood that consumers would encounter these products and services together in the marketplace. As such, there is a close relationship between skin care products and services since consumers are quite likely to believe that these products and services emanate from a single source. Certainly, it would be disingenuous for Respondent to deny that at the very least, skin care products are complementary to skin care services.
Further, not only are skin care services and skin care goods related for purposes of establishing Complainant's priority, it is also widely recognized that a trademark owner is entitled not only to protection of a mark in connection with the products or services he or she actually sells, but also to those markets where the owner might reasonably be expected to be selling services or products in the future. This is known as the "natural zone of expansion" of adjacent product or service markets, and has been asserted to protect the rights of senior users to expand later into adjacent markets for products and services, so long as the adjacent market is within the "natural area of expansion" for that particular industry. Ametek, Inc. v. Acorn Structures, Inc., 167 USPQ 185 (T.T.A.B. 1970). As explained in Commerce Nat. Ins. Services, Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432 (3d Cir. 2000):
[W]here a senior user of a mark later expands into another industry and finds an intervening junior user, priority in the mark in the second industry depends on whether the senior user would normally or reasonably have been expected to expand into that industry. ... This, in turn, depends on whether the nature of the industries was such that purchasers would reasonably expect the services rendered by these industries to originate from a common source.
In CAE, Inc. v. Clean Air Engineering, Inc., 267 F.3d 660 (7th Cir. 2001), the Court upheld the right of a senior user to enjoin the use of an identical mark by a junior user, even though the senior user's use was primarily related to testing and measuring products, and the junior user used the mark largely with "source testing" services for compliance with air pollution regulations. The Court reasoned that there existed an 'industrial affinity between their products and services that is likely to increase consumer confusion if both parties market their products and services in connection with the same CAE mark'." As such, the junior user's services were considered a natural expansion of the products already offered by the senior user and the Court found a likelihood of confusion existed between the respective uses of the mark.
In short, courts will uphold the right of a senior user to expand into an adjacent market, despite the existence of an intervening junior user in that adjacent market, so long as the respective goods and services are likely to be viewed by consumers as related. As explained above, consumers will undoubtedly view skin care goods and services as related. Thus, Complainant is still entitled to priority with regard to skin care products since such products are indisputably within the "natural zone of expansion" of Complainant's skin care services. Respondent's argument that it is entitled to priority based upon its sales of skin care products is misplaced and is insufficient to establish priority because Complainant had already established priority for skin care products through its use of ELITE SKIN CARE for skin care services — use which it commenced over six years prior to any use Respondent made of its own mark in the skin care industry and registration of the mark more than 5 years prior to Respondent's first use of the designation "eliteskin."
Respondent has no genuine claim to the eliteskin.com or eliteskin.net domain names. Instead, Complainant holds priority to the ELITE SKIN CARE trademark and the right to enforce its mark against other sellers of skin care services and products. This includes Respondent's registration of the eliteskin.com and eliteskin.net domain names, registered May 24, 2006 and November 22, 2009, respectively — domains registered over three years after Complainant's constructive first use date of its ELITE SKIN CARE trademark.
The PTO acknowledges the relationship between skin care products and services
Complainant notes that the PTO acknowledged the relationship between skin care products and services by virtue of the fact that just last month Complainant's registration for ELITE SKIN CARE was the subject of a refusal of third-party Application Serial No. 85/146,792 for the mark BIO-ELITE SKIN CARE for Class 3 skin care products. In the January 15, 2011 Action, the Examining Attorney clearly spelled out the relationship between skin care products and services, stating that the proximity of the respective goods and services, together with the similarity of the marks, was likely to cause confusion among consumers:
The parties' goods/services are closely related, because applicant appears to make and/or sell skin care products put together by aestheticians, which is a service often provided by skin care salons. Skin care salons also sell skin care products. Skin care salons commonly employ aestheticians who will package and recommend coordinating skin care products that are sold by the salon. Thus, registrant's services encompass applicant's goods/services.
The Examining Attorney in that case then went on to cite several registered marks for skin care products and services as evidence of the fact that these products and services "are of a kind that may emanate from a single source." In producing this evidence, the Examining Attorney reiterated the well- established premise that "goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion" and that "it is sufficient that the goods and/or services are related in some manner and/or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source."
In short, Respondent's argument that there is no relationship between Complainant's services and its own goods is not supported by fact or law.
The examining Attorney's failure to cite Complainant's Registration during the examination of Respondent's Application does not support a finding of no likelihood of confusion.
Respondent's assertion that the Examining Attorney's failure to cite Complainant's ELITE SKIN CARE registration during examination of Respondent's application for ELITESKIN compels the conclusion that there is no likelihood of confusion is misplaced. The Examining Attorney's search report was inexplicably limited to marks registered in International Class 3. As a result, the Examining Attorney's search did not reveal Complainant's registration and thus, the Examining Attorney presumably had no knowledge of Complainant's earlier rights. In view of the overwhelming case law and TTAB precedent discussed above establishing the relationship between skin care services and products, there is no explanation for the Examining Attorney's failure to search other classes, other that the Examining Attorney committed an error.
Respondent attempts to reinforce this argument by contending that the Examining Attorney took no action upon receiving notice of Complainant's registration by virtue of Complainant's Letter of Protest and that this was somehow dispositive of the Examining Attorney's belief that there is no likelihood of confusion between the respective marks. Respondent's argument here is disingenuous, at best. First, Respondent fails to explain that by the time Complainant's Letter of Protest was granted on May 23, 2010, the Examining Attorney had already issued her formal refusal of Respondent's application. In other words, Respondent's application was already rejected by the PTO and there was no need for the Examining Attorney to further reject the application based upon Complainant's registration.
Second, and even more significant, was the fact that in response to Complainant's Letter of Protest, the Office of the Deputy Commissioner for Trademark Examination Policy issued an instruction to the Examining Attorney who was examining Respondent's ELITESKIN application advising:
A Letter of Protest filed before publication has been granted. It has been determined that the information submitted by the protester is relevant and supports a reasonable ground for refusal appropriate in ex parte examination. Therefore, you must consider the following and make an independent determination whether to issue a refusal based on the objections raised in the Letter of Protest:
Possible likelihood of confusion with protester's registered marks U.S. Reg No. 2821236
Respondent suggests that "the USPTO was clearly aware of Complainant's mark and yet, the examiner did not even cite it is as a potentially confusingly similar mark." Respondent's argument is disingenuous. The reality is that the Examining Attorney never had the opportunity to reject Respondent's application for ELITESKIN in view of Complainant's registration for ELITE SKIN CARE because Respondent abandoned its application before the Examining Attorney could issue such a refusal. Indeed, Respondent decided not to respond to the Examining Attorney's first refusal to register ELITESKIN and let the application go abandoned. Curiously, Respondent fails to mention this compelling fact in its response.
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."
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondent Timothy Schmidt is the officer, director and registered agent of Respondent South Beach Herbals, Inc. Complainant submits a Florida Department of State Division of Corporations entity registration form that details such information. Therefore, Complainant argues that the two entities that registered the disputed domain names are effectively the same under the Policy.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Preliminary Issue: Concurrent Court Proceedings
Respondent asserts within its Response that on February 11, 2011 it filed a multi-count action in the United States District Court in the Central District of California, CV-11-01338 JSL, against Complainant. Respondent contends that it conducts business through its legal entity, Skin Pro International, Inc., which is the plaintiff in the above named case. Respondent asserts that the complaint is for common law trademark infringement, false designation of origin, unfair competition, and tortious interference with prospective economic advantage, some of which pertain to Respondent’s usage of the <eliteskin.com> and <eliteskin.net> domain names.
In situations where concurrent court proceedings are pending, as is the situation with respect to the instant Complaint, some panels have chosen to proceed with the arbitration filing. See Western Florida Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) (deciding to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”). The Panel elects to consider this dispute.
FINDINGS
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
I find the issues on this element in favor of Complainant.
Complainant submits evidence to show that it owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for its ELITE SKIN CARE mark (e.g., Reg. No. 2,821,236 issued March 9, 2004). The Panel may find that such evidence is sufficient for Complainant to establish rights in its mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant contends that the <eliteskin.com> and <eliteskin.net> domain names are confusingly similar to its ELITE SKIN CARE mark, where the domain names merely omit the spaces between the terms of the mark and the term CARE from Complainant’s mark. Complainant notes that neither the generic top-level domain (“gTLD”) “.com” nor “.net” effectively distinguish the domain names from its mark. Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
I find the issues on this element in favor of Complainant.
The Panel is reminded that 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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant does not expressly argue that Respondent is not commonly known by the disputed domain names within its Complaint. However, the Panel notes that the WHOIS information for both of the disputed domain names does not indicate that Respondent is commonly known as the domain names. The Panel notes that “South Beach Herbals” is the registrant of the <eliteskin.net> domain name, and “Timothy Schimdt” is the registrant of the <eliteskin.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names 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 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 argues that the disputed domain names resolve to a website that advertises and sells products that compete directly with those offered under Complainant’s ELITE SKIN CARE mark. Complainant contends that use of the confusingly similar domain names is not a bona fide offering of goods or services under the Policy. The Panel agrees that Respondent’s use of the disputed domain names to market and offer competing products is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
I find the issues on this element in favor of Complainant.
Complainant has submitted evidence and arguments to show that Respondent is using the disputed domain names to advertise and sell directly competing skin care products. The Panel infers that such use disrupts Complainant’s business, and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Further, Complainant argues that Respondent registered and is using the disputed domain names to intentionally attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark. The Panel finds that Respondent’s use of the disputed domain names to advertise and sell competing goods is further evidence of bad faith under 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).
Lastly, Complainant asserts that Respondent had actual and/or constructive notice of Complainant and its rights in the mark prior to registration of the domain names. Complainant contends that Respondent had actual notice of Complainant’s rights in the ELITE SKIN CARE mark through its objection with the USPTO in Respondent’s application for trademark registration. The Panel finds Respondent has actual knowledge of Complainant's mark and therefore Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eliteskin.com> and <eliteskin.net> domain names be TRANSFERRED from Respondent to Complainant.
TIMOTHY D. O’LEARY, Panelist
Dated: MARCH 16, 2011
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