national arbitration forum

 

DECISION

 

Lifetouch Inc. v. Above.com Domain Privacy

Claim Number: FA1203001435502

 

PARTIES

Complainant is Lifetouch Inc. (“Complainant”), represented by Gregory Golla of Merchant & Gould, P.C., Minnesota, USA.  Respondent is Above.com Domain Privacy (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lifetouchportraitstudios.com>, registered with ABOVE.COM, Pty. Ltd.

 

PANEL

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 20, 2012; the National Arbitration Forum received payment on March 21, 2012.

 

On March 21, 2012, ABOVE.COM, Pty. Ltd. confirmed by e-mail to the National Arbitration Forum that the <lifetouchportraitstudios.com> domain name is registered with ABOVE.COM, Pty. Ltd. and that Respondent is the current registrant of the name.  ABOVE.COM, Pty. Ltd. has verified that Respondent is bound by the ABOVE.COM, Pty. Ltd. 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 March 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 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@lifetouchportraitstudios.com.  Also on March 22, 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 April 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

    1. Complainant has registered the LIFETOUCH PORTRAIT STUDIOS INC. mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,636,888 registered March 5, 1991);
    2. Complainant has also registered the LIFETOUCH mark with the USPTO (e.g., Reg. No. 1,323,758 registered March 5, 1985);
    3. Complainant has also registered the LIFE TOUCH mark with the Australian trademark authority, IP Australia (Reg. No. A419551 registered December 12, 1984);
    4. Respondent’s disputed domain name is confusingly similar to Complainant’s marks;
    5. Respondent is not commonly known by the disputed domain name;
    6. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name;
    7. Respondent’s disputed domain name resolves to a website offering products and advertising for Complainant’s competitors;
    8. Respondent registered and is using the disputed domain name in bad faith;
    9. Respondent had constructive knowledge of Complainant’s rights in the LIFETOUCH marks.

 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant has rights to its LIFE TOUCH PORTRAITS STUDIO INC, LIFETOUCH and LIFE TOUCH marks.

2.    Respondent’s <lifetouchportraitsstudios.com> domain name is confusingly similar to Complainant’s marks.

3.    Respondent has no rights to or legitimate interests in the disputed domain name.

4.    Respondent registered and used the domain name in bad faith.

 

DISCUSSION

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant claims that it has established its rights in the LIFETOUCH PORTRAIT STUDIOS INC. mark by registering it with the USPTO (Reg. No. 1,636,888 registered March 5, 1991).  Complainant submits the trademark certificate for the mark issued the USPTO, which the Panel finds appears to support Complainant’s claim that the mark is registered and that it is the owner of record.  The Panel concludes that Complainant has established its rights in the LIFETOUCH PORTRAIT STUDIOS INC. mark under Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

 

Complainant also claims that it has established its rights in the LIFETOUCH mark by registering with trademark authorities throughout the world, including with the USPTO (e.g., Reg. No. 1,323,758 registered March 5, 1985) and IP Australia (Reg. No. A419551 registered December 12, 1984).  Previous panels held that holding multiple trademark registrations from different governmental authorities satisfies the rights requirement of this provision.  See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).  Therefore, the Panel concludes that Complainant has established its rights in the LIFE TOUCH mark under Policy ¶ 4(a)(i) by registering it the USPTO and IP Australia. 

 

Complainant argues that Respondent’s disputed domain name is confusingly similar to its LIFETOUCH PORTRAIT STUDIOS INC. mark.  Complainant states that the disputed domain name includes nearly the entire mark, merely removing the corporate identifier “Inc.” and the spaces between the terms, while adding the generic top-level domain (“gTLD”) “.com.”  The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s LIFETOUCH PORTRAIT STUDIOS INC. mark under Policy ¶ 4(a)(i).  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); 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).

 

Complainant also argues that Respondent’s disputed domain name is confusingly similar to its LIFETOUCH mark.  Complainant states that the disputed domain name includes the entire mark, merely adding the gTLD “.com” and the descriptive terms “portrait studios.”  Complainant claims that the terms are descriptive because it is the in the photography business.  As a result, the Panel determines that Respondent’s disputed domain name is confusingly similar to Complainant’s LIFETOUCH mark under Policy ¶ 4(a)(i).  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business).

 

Rights or Legitimate Interests

 

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 asserts that Respondent is not commonly known by the disputed domain name.  Complainant states that the WHOIS information identifies the registrant of the disputed domain name as “Above.com Domain Privacy.”  The Panel notes that there does not appear to be any other evidence on record suggesting a relationship between Respondent and the disputed domain name.  Thus, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See 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; see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.  Complainant claims that the disputed domain name resolves to a website offering advertisements for, and products from, its competitors in the photography industry.  The Panel notes that the evidence provided by Complainant appears to indicate that the website in fact offers links to Complainant’s competitors in the photography industry.  The Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with 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)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent’s disputed domain name disrupts its business, indicating bad faith registration and use.  Complainant claims that the disputed domain name resolves to a website offering competing products and advertisements for Complainant’s competitors, like JCPenney Photography.  The Panel notes that the printout provided by Complainant appears to indicate that the website actually offers links to Complainant’s competitors.  Previous panels have held that offering links to competing websites disrupts complainants’ businesses.  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).  Thus, the Panel concludes that Respondent is disrupting Complainant’s business, which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii).

 

Complainant also alleges that Respondent is attempting to gain commercially from the disputed domain name by creating confusion amongst Internet users. The Panel notes that the disputed domain name appears to resolve to a website offering links to Complainant’s competitors in the photography industry.  The Panel infers that Respondent generates revenue by collecting click-through fees for each Internet user diverted to the linked sites.  As a result, the Panel determines that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business.  The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site.  There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).

 

Complainant asserts that its trademark registrations for the LIFETOUCH and LIFETOUCH PORTRAIT STUDIOS INC. marks put Respondent on constructive notice of its rights in the marks.  While panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel finds that, due to the fame of Complainant's mark and Respondent’s use of the domain name, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); 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).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <lifetouchportraitstudios.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  May 7, 2012

 

 

 

 

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