Pacific BioScience Laboratories, Inc. v. Li Li Jian
Claim Number: FA1202001427790
Complainant is Pacific BioScience Laboratories, Inc. (“Complainant”), represented by Jodi A. DeSchane of Faegre Baker Daniels, LLP, Minnesota, USA. Respondent is Li Li Jian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clarisonicclarisonic.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2012; the National Arbitration Forum received payment on February 2, 2012.
On February 2, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <clarisonicclarisonic.com> 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 February 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2012 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@clarisonicclarisonic.com. Also on February 3, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 March 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
Complainant launched its CLARISONIC skin care brush products in 2004 and currently offers them throughout the world.
Complainant owns registrations, on file with the United States Patent and Trademark Office (“USPTO”), for its CLARISONIC trademark, including Reg. No. 3,087,196, registered May 2, 2006.
Respondent registered the <clarisonicclarisonic.com> domain name on December 27, 2011.
The disputed domain name resolves to a website that purports to sell Com-plainant’s products, but instead sells counterfeit versions of those products.
Respondent’s <clarisonicclarisonic.com> domain name is confusingly similar to Complainant’s CLARISONIC mark.
Respondent is not commonly known by the contested <clarisonicclarisonic.com> domain name.
Respondent is not a licensee of Complainant and is not permitted to use Com-plainant’s CLARISONIC mark.
Respondent does not have any rights to or legitimate interests in the domain name <clarisonicclarisonic.com>.
Respondent registered and uses the <clarisonicclarisonic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the CLARISONIC trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that a complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in a mark pursuant to Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that a complainant had established rights in the BLOOMBERG mark under Policy ¶ 4(a)(i) through registration of the mark with the United States Patent and Trademark Office).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that of Respondent’s residence or base of operations. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of ¶ 4(a)(i) of the Policy whether a complainant’s mark is registered in a country other than that of a respondent’s place of business).
Respondent’s <clarisonicclarisonic.com> domain name is confusingly similar to Complainant’s CLARISONIC trademark. The domain name consists only of Complainant’s CLARISONIC mark, recited twice, and the generic top-level domain (“gTLD”) “.com”. The presence of the gTLD “.com” is of no consequence to our analysis because a domain name requires a top-level domain. See, for example, Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
As for the balance of the domain name, it is well-established that the combination in a domain name of two different marks owned by a complainant does not avoid a finding of confusing similarity under ¶ 4(a)(i). See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where a respondent combined a complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also 3M Co. v. Kim, FA 1285444 (Nat. Arb. Forum Oct. 29, 2009) (finding that the combination of a complainant’s 3M and SCOTCH marks to create the <scotch3m.com> domain name did not remove the disputed domain name from the realm of confusing similarity). It follows that two recitations of the same mark of another in a con-tested domain name produces the same result.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <clarisonicclarisonic.com> domain name. Once Complainant makes out a prima facie case in support of its allegations under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove that it does have rights to or legitimate interests in the contested domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has made prima facie showing in support of its assertions under this head of the Policy. Respondent’s failure to respond to the Complaint filed in this proceeding therefore allows us to infer that Respondent does not have rights to or legitimate interests in the <clarisonicclarisonic.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the <clarisonicclarisonic.com> domain name, and that Respondent is not a licensee of Complainant and is not permitted to use Complainant’s CLARISONIC mark. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Li Li Jian”, which does not resemble the <clarisonicclarisonic.com> domain name. On this record, we conclude that Respondent is not commonly known by the <clarisonicclarisonic.com> domain name so as to have rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in those domains under Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate interests in that domain under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the dis-puted domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent does not make a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the contested domain name, in that the website resolving from the domain purports to be associated with Complainant and purports to offer Complainant’s products, but in fact offers counterfeit versions of Complainant’s products. This use of the domain is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <clarisonicclarisonic.com> domain name under Policy ¶ 4(c)(iii). See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding that a respondent’s use of a domain name which is confusingly similar to the mark of another to sell counterfeit products is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Max Mara Fashion Grp. S.r.l. v. Lee, FA 1391129 (Nat. Arb. Forum July 7, 2011):
Respondent’s sale of counterfeit versions of Complainant’s merchandise via the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use of the <clarisonicclarisonic.com> domain name to sell counterfeit versions of Complainant’s goods, presumably for Respondent’s commercial gain, disrupts Complainant’s business, and therefore stands as evidence of bad faith registration and use of the domain name pur-suant to Policy ¶ 4(b)(iii). See Brainetics, LLC v. Zhang, FA 1389740 (Nat. Arb. Forum June 22, 2011):
The Panel finds that respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products constitutes bad faith registration and use under Policy ¶ 4(b)(iii).
Moreover, Respondent’s registration and use of the <clarisonicclarisonic.com> domain name, as alleged in the Complaint, and for Respondent’s presumed com-mercial benefit, creates confusion among Internet users as to the possibility of Complainant’s association with the domain and its resolving website and counterfeit products. This is evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding bad faith registration and use of a domain under Policy ¶ 4(b)(iv), where a respondent benefited from the confusion caused among Internet users by the registration and use of a domain name which was confusingly similar to the mark of another, and which domain was employed to sell counterfeit versions of a complainant’s goods); to the same effect, see also C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011).
The Panel finds Policy ¶ 4(a)(iii) is satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <clarisonicclarisonic.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 15, 2012
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