California Cosmetics, Inc. v. Michael Jones / Jones Interactive
Claim Number: FA1210001466071
Complainant is California Cosmetics, Inc. (“Complainant”), represented by Malcolm Wittenberg of Bay Area Technology Law Group PC, California, USA. Respondent is Michael Jones / Jones Interactive (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sylkskin.net> and <sylkskin.org>, registered with Tucows, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2012; the National Arbitration Forum received payment on October 5, 2012.
On October 9, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <sylkskin.net> and <sylkskin.org> domain names are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 October 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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@sylkskin.net, postmaster@sylkskin.org. Also on October 17, 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 November 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. 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 issues 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 names be transferred from Respondent to Complainant.
A. Complainant
a) Policy ¶ 4(a)(i): Complainant’s rights in the mark and the confusing similarity of the disputed domain names.
a. Complainant has rights in the SILKSKIN mark (Reg. No. 1,648,614 registered June 25, 1991) by virtue of its United States Patent and Trademark Office (“USPTO”) registration. The mark is used to market skin care products.
b. The <sylkskin.net> and <sylkskin.org> domain names are confusingly similar to the SILKSKIN mark. Each of the disputed domain names consists merely of Complainant’s SILKSKIN mark, misspelled by one letter, and a generic top-level domain (“gTLD”).
b) Policy ¶ 4(a)(ii): Respondent’s lack of rights and legitimate interests in the <sylkskin.net> and <sylkskin.org> domain names.
a. The disputed domain names resolve to websites where an advertisement is displayed for a skin care product claiming to reduce wrinkles and smooth skin and a link for ordering the product that resolves to the <mysecureordering.net/silk1tm> domain name.
c) Policy ¶ 4(a)(iii): Respondent registered and uses the <sylkskin.net> and <sylkskin.org> domain names in bad faith.
a. Respondent intentionally attempted to confuse Internet users into believing that Complainant and Respondent are affiliated or that Complainant approves of the registration and use of the <sylkskin.net> and <sylkskin.org> domain names. Respondent’s registration and use of the <sylkskin.net> and <sylkskin.org> domain names results in irreparable harm being inflicted upon Complainant and the SILKSKIN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reason set forth below, the Panel finds that the 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.”).
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.” 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
In this decision, Respondents collectively are referred to as Respondent.
Complainant contends that it has rights in the SILKSKIN mark (Reg. No. 1,648,614 registered June 25, 1991) by virtue of its USPTO registration. Complainant states that the mark is used to market skin care products. In Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), the panel held that a complainant’s registration of a mark demonstrates its rights in the mark. Therefore, the Panel finds that Complainant has rights in the SILKSKIN mark under Policy ¶ 4(a)(i).
Complainant next alleges that the <sylkskin.net> and <sylkskin.org> domain names are confusingly similar to the SILKSKIN mark. Complainant notes that each of the disputed domain names consists merely of Complainant’s SILKSKIN mark, misspelled by one letter, and a gTLD. Previous panels have held that the misspelling of a mark by one letter, such as here where Respondent simply substitutes an “i” for a “y,” does not sufficiently distinguish the disputed domain name from the mark. See Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004) (“Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). Additionally, the panel in Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), found that the addition of a gTLD to a mark in a domain name is irrelevant to a Policy ¶ 4(a)(i) determination. Therefore, the Panel finds that Respondent’s <sylkskin.net> and <sylkskin.org> domain names are confusingly similar to the SILKSKIN 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 asserts that Respondent lacks rights and legitimate interests in the <sylkskin.net> and <sylkskin.org> domain names. In order to establish that a respondent does not have rights or legitimate interests, a complainant must demonstrate that the respondent is not commonly known by the disputed domain name, often evidenced by the WHOIS record. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). The Panel notes that the WHOIS record for the <sylkskin.net> and <sylkskin.org> domain names lists “Michael Jones / Jones Interactive” as the domain name registrant. As such, the Panel finds that there is no similarity between the disputed domain names and the Respondent, and thus that Respondent is not commonly known by the <sylkskin.net> and <sylkskin.org> domain names pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the <sylkskin.net> and <sylkskin.org> domain names shows Respondent has no rights or legitimate interests in them. Complainant asserts, and provides the Panel with evidence, that the disputed domain names resolve to websites where an advertisement is displayed for a skin care product claiming to reduce wrinkles and smooth skin as well as a link for ordering the product that resolves to the <mysecureordering.net/silk1tm> domain name. The Panel notes that Respondent’s use, pertaining to a skin care product, is in direct competition with Complainant’s marketing of its own skin care products. Panels have previously found that the display of links to competing goods or the offering of the competing goods is not a use which provides a respondent with rights or legitimate interests in the domain name. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Therefore, the Panel finds that Respondent’s use of the <sylkskin.net> and <sylkskin.org> domain names 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).
Complainant has proven this element.
Complainant argues that Respondent registered and uses the <sylkskin.net> and <sylkskin.org> domain names in bad faith. Complainant contends that Respondent intentionally attempted to confuse Internet users into believing that Complainant and Respondent are affiliated or that Complainant approves of Respondent’s registration and use of the <sylkskin.net> and <sylkskin.org> domain names. Complainant claims that the disputed domain names resolve to websites where an advertisement is displayed for a skin care product claiming to reduce wrinkles and smooth skin and a link for ordering the product that resolves to the <mysecureordering.net/silk1tm> domain name. Complainant alleges that Respondent’s registration and use of the <sylkskin.net> and <sylkskin.org> domain names results in irreparable harm being inflicted upon Complainant and the SILKSKIN mark. The Panel infers that Respondent profits from the operation of the disputed domain names. Therefore, the Panel finds that Respondent registered and uses the <sylkskin.net> and <sylkskin.org> domain names in a bad faith attempt to take advantage of Internet users’ mistakes as to the source or sponsor of the disputed domain names by creating a likelihood of confusion pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).
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 <sylkskin.net> and <sylkskin.org> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 21, 2012
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