Vivo Per Lei, Inc., d/b/a Orogold Cosmetics v. Staci Michele
Claim Number: FA1302001484539
Complainant is Vivo Per Lei, Inc., dba Orogold Cosmetics (“Complainant”), represented by Christopher Ditico, California, USA. Respondent is Staci Michele (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <orogold.com>, registered with Fabulous.com Pty Ltd.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2013; the National Arbitration Forum received payment on February 11, 2013.
On February 11, 2013, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <orogold.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.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 February 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2013 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@orogold.com. Also on February 12, 2013, 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 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
a) Complainant owns the OROGOLD mark.
a. The mark is used in connection with a variety of skin care products.
b. The mark (e.g., Reg. No. 3,826,410 registered July 27, 2010) is also registered with the United States Patent and Trademark Office (“USPTO”).
b) The <orogold.com> domain name is identical to the OROGOLD mark.
a. The entire mark is incorporated in the disputed domain name, and the addition of the generic top-level domain (“gTLD”) is required of all domain names and thus may be disregarded for a Policy ¶ 4(a)(i) analysis.
c) Respondent has no rights or legitimate interests in the disputed domain name.
a. Complainant has given no authorization for Respondent or any prior owners of the <orogold.com> domain name to register or use the disputed domain name. Respondent does not possess any rights in the term OROGOLD and has never used the challenged domain in connection with a bona fide offering of goods or services. The WHOIS record lists “Staci Michele,” whose name presents no inherent association with Complainant or the OROGOLD mark.
b. The <orogold.com> domain name resolves to a generic domain parking page with a directory of listings to Complainant and its competitors.
d) The <orogold.com> domain name was registered and is being used in bad faith.
a. Respondent registered the disputed domain name for the purpose of selling, renting, or otherwise transferring the <orogold.com> domain name to Complainant or a competitor for valuable consideration. Respondent had the domain name listed for sale and/or auction on two separate domain selling websites, <sedo.com>, and <godaddy.com> at the time the domain name was acquired.
b. Respondent’s use of a landing page incorporating directory links for Complainant’s competitors further demonstrates bad faith.
c. Respondent’s bad faith is further clear from the circumstances surrounding the <orogold.com> domain name. On January 4, 2013, Complainant sent a cease and desist letter to the original registrant of the domain name, Chris Carter, requesting the transfer of the domain name due to the infringement of Complainant’s rights. Mr. Carter immediately placed the disputed domain name up for auction. On January 20, 2013, the registrant information for the <orogold.com> domain name was changed from Mr. Carter to Respondent. Respondent also uses the alias Chris Carter. The connection between Mr. Carter and Respondent also appears to be supported by both registrants’ propensity to acquire multiple domain names that utilize well known trademarks. It has also been found that the same GoDaddy.com auction for the domain name existed, Item #83723890, despite change of registrant, establishing a reasonable belief that both individuals are mutually affiliated and thus attempting to circumvent Complainant’s ability to expeditiously initiate UDRP proceedings.
At the time of Respondent’s registration of the <orogold.com> domain name there was imputed constructive notice of Complainant’s rights to the OROGOLD mark. The <orogold.com> domain name was registered years after Complainant’s OROGOLD mark had been applied for and registered with the USPTO. Whereas Complainant’s mark was filed September 22, 2009 and registered July 27, 2010, the domain name was not created until April 10, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Vivo Per Lei, Inc. d/b/a Orogold Cosmetics who list its address as Northridge, CA, USA. Complainant has registered the OROGOLD mark and used it on six continents via third party distributors, retail stores, and on-line retail outlets since April 2008. Complainant has registered the mark for a variety of goods and services associated with the business Complainant cosmetics industry business. Complainant also maintains a web presence at its official site <orogoldcosmetics.com>.
Respondent is Staci Michele who list its address Harlingen, TX, USA. Respondent’s registrar list its address Fortitude Valley, Queensland, Australia.
Respondent registered the <orogold.com> domain name on April 10, 2012.
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.”).
Complainant contends that it owns the OROGOLD mark. Complainant asserts that the mark is used in connection with a variety of skin care products. Complainant demonstrates that the mark (e.g., Reg. No. 3,826,410 registered July 27, 2010) is also registered with the USPTO. Panels have found that registration of a mark with a federal trademark authority is sufficient to satisfy the requirements of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). The Panel finds that Complainant has rights in the OROGOLD mark under Policy ¶ 4(a)(i).
Complainant alleges that the <orogold.com> domain name is identical to the OROGOLD mark. Complainant asserts that the entire mark is incorporated in the disputed domain name, and the addition of the gTLD is required of all domain names and thus may be disregarded for a Policy ¶ 4(a)(i) analysis. The Panel agrees with the irrelevancy of the addition of a gTLD. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). The Panel finds that the <orogold.com> domain name is identical to the OROGOLD mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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). The Complainant has met this burden.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has given no authorization for Respondent or any prior owners of the <orogold.com> domain name to register or use the disputed domain name. Complainant states that Respondent does not possess any rights in the term OROGOLD and has never used the challenged domain in connection with a bona fide offering of goods or services. Complainant further notes that the WHOIS record lists “Staci Michele,” whose name presents no inherent association with Complainant or the OROGOLD mark. The Panel finds that Respondent is not commonly known by the <orogold.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006)(information involving authorization to use a mark and the WHOIS record are illustrative of whether a respondent is commonly known by a mark.).
The <orogold.com> domain name resolves to a generic domain parking page with a directory of listings to Complainant and its competitors, Complainant argues. Panels have consistently held that the use of a domain name to resolve to a site featuring competing links is not a use which garners protection under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel finds that Respondent is using the <orogold.com> domain name for neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that the <orogold.com> domain name was registered and is being used in bad faith. Complainant asserts that Respondent registered the disputed domain name for the purpose of selling, renting, or otherwise transferring the <orogold.com> domain name to Complainant or a competitor for valuable consideration. Complainant further states that Respondent had the domain name listed for sale and/or auction on two separate domain selling websites, <sedo.com> and <godaddy.com>, at the time the domain name was acquired. The Panel finds that Respondent registered and is using the <orogold.com> domain name in bad faith under Policy ¶ 4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)(the registration of a domain name to eventually sell the domain name is evidence of bad faith.).
Complainant next alleges that Respondent’s use of a landing page incorporating directory links for Complainant’s competitors further demonstrates bad faith. Panels have previously held that registration and use of a domain name that is confusingly similar to a mark to display competing links is a means to take commercial advantage of Internet users’ mistakes. 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). The Panel finds bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent’s bad faith is further evident from the circumstances surrounding the <orogold.com> domain name. Complainant claims that on January 4, 2013, Complainant sent a cease and desist letter to the original registrant of the domain name, Chris Carter, requesting the transfer of the domain name due to the infringement of Complainant’s rights. Complainant asserts that Mr. Carter immediately placed the disputed domain name up for auction, and on January 20, 2013, the registrant information for the <orogold.com> domain name was changed from Mr. Carter to Respondent. Complainant argues that Respondent also goes under the alias Chris Carter. Complainant states that the connection between Mr. Carter and Respondent also appears to be supported by both registrants’ propensity to acquire multiple domain names that utilize well known trademarks. Complainant notes that it has also been found that the same GoDaddy.com auction for the domain name existed, Item #83723890, despite change of registrant, establishing a reasonable belief that both individuals are mutually affiliated and thus attempting to circumvent Complainant’s ability to expeditiously initiate UDRP proceedings. The Panel finds that the <orogold.com> domain name was registered and is used in bad faith under Policy ¶ 4(a)(iii). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <orogold.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 1, 2013
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