Dr. Veronique Simon v. Loft Sam
Claim Number: FA1206001446855
Complainant is Dr. Veronique Simon (“Complainant”), represented by Richard A. West, New Jersey. Respondent is Loft Sam (“Respondent”), Monaco.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <docteurveroniquesimon.com>, registered with GoDaddy.com, LLC.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 1, 2012; the National Arbitration Forum received payment on June 1, 2012.
On June 4, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <docteurveroniquesimon.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 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@docteurveroniquesimon.com. Also on June 12, 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 July 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns rights in the VERONIQUE SIMON mark because Complainant uses the mark in her professional capacity as a physician and commercially in connection with her product lines.
2. Respondent’s <docteurveroniquesimon.com> domain name is identical to Complainant’s VERONIQUE SIMON mark.
3. Respondent and Complainant formerly had an agreement in which they would work together to develop cosmetic products.
4. Respondent is not commonly known by the <docteurveroniquesimon.com> domain name and does not currently have a relationship with Complainant.
5. Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to the source, affiliation, or endorsement of Respondent’s website.
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
The Domain Name contains Complainant’s first and last names. Complainant claims rights in the VERONIQUE SIMON mark, but does not provide evidence of a trademark registration with any national trademark agency. Under Policy ¶4(a)(i), a complainant is not required to hold a nationally registered trademark to establish rights in a mark. Common law rights are sufficient when a complainant demonstrates secondary meaning associated with a mark. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
In determining whether Complainant has common law rights in the VERONIQUE SIMON mark, the Panel considers Complainant’s factual claims in her Complaint. The Panel views the Complaint in a light most favorable to Complainant because it is uncontested. See Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant argues she owns rights in her VERONIQUE SIMON mark. Her uncontested allegations demonstrate her common law rights in the mark VERONIQUE SIMON. The panel in Asper v. Comm. X Inc., D2001-0540 (WIPO June 11, 2001), found that “where the complainant was successful [in demonstrating common law rights] he or she either used the personal name in question as a marketable commodity, allowing his or her name or image to be used for a fee, to promote someone else’s goods or services, or for direct commercial purposes in the marketing of his or her own goods and services.” See also Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with complainant that common law trademark rights exist); see also Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (finding that a “person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law”); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that complainant have rights in a registered trademark and that it is sufficient to show common law rights in holding that complainant has common law rights to her name). The Panel finds that Complainant established that her VERONIQUE SIMON mark acquired secondary meaning, which establishes common law rights in the VERONIQUE SIMON mark for the purposes of Policy ¶ 4(a)(i).
Complainant alleges that she uses the mark in her professional capacity as a physician and commercially in connection with her product lines. Complainant provides a contract signed by Complainant and Respondent that is dated May 5, 2006, which is evidence of Complainant’s rights in the VERONIQUE SIMON mark. The Panel accepts Complainant’s arguments as true and concludes that Complainant owns rights in the VERONIQUE SIMON mark under Policy ¶ 4(a)(i), dating back to at least May 5, 2006. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning).
Complainant avers that Respondent’s <docteurveroniquesimon.com> domain name is identical to Complainant’s VERONIQUE SIMON mark. The disputed domain name removes the space in Complainant’s mark, adds the descriptive and misspelled term “docteur,” and adds the generic top-level domain (“gTLD”) “.com.” Based on these alterations to Complainant’s mark, the Panel finds that although the disputed domain name is not identical to Complainant’s mark, Respondent’s <docteurveroniquesimon.com> domain name is confusingly similar to Complainant’s VERONIQUE SIMON mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also 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)).
Complainant has proven this element.
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 contends that Respondent is not commonly known by the <docteurveroniquesimon.com> domain name and does not currently have a relationship with Complainant. Complainant admits that Respondent and Complainant previously entered in to a contractual relationship concerning the development of cosmetic products, but Complainant alleges that the contractual relationship no longer exists. The WHOIS information lists the registrant of the disputed domain name as “Loft Sam,” which the Panel finds is not similar to the <docteurveroniquesimon.com> domain name. In light of the evidence in the record and the lack of a Response, the Panel concludes that Respondent is not commonly known by the <docteurveroniquesimon.com> 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).
Complainant claims that Respondent uses the <docteurveroniquesimon.com> domain name to provide Complainant’s name, a biographical sketch, and a photograph on the resolving website, without Complainant’s permission. Complainant alleges that Respondent uses Complainant’s business address on the resolving website. The Panel determines that Respondent is attempting to pass itself off as Complainant and finds that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <docteurveroniquesimon.com> domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Complainant has proven this element.
Complainant argues that Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to the source, affiliation, or endorsement of Respondent’s website. The Panel finds that Respondent is attempting to pass itself off as Complainant online and that Respondent commercially benefits from this scheme, and that Respondent registered and uses the <docteurveroniquesimon.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <docteurveroniquesimon.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 13, 2012
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