national arbitration forum

 

DECISION

 

California Cosmetics, Inc. v. Silk Skin Care / Xiao Cho

Claim Number: FA1303001488796

PARTIES

Complainant is California Cosmetics, Inc. (“Complainant”), represented by Malcolm Wittenberg of Bay Area Technology Law Group PC, California, USA.  Respondent is Silk Skin Care / Xiao Cho (“Respondent”), represented by Sheqian Yuan of Tang & Yuan LLP, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thesilkskincare.com>, registered with FASTDOMAIN, INC.

 

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.

 

Héctor A. Manoff as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2013; the National Arbitration Forum received payment on March 6, 2013.

 

On March 7, 2013, FASTDOMAIN, INC. confirmed by e-mail to the National Arbitration Forum that the <thesilkskincare.com> domain name is registered with FASTDOMAIN, INC. and that Respondent is the current registrant of the name.  FASTDOMAIN, INC. has verified that Respondent is bound by the FASTDOMAIN, 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 March 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 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@thesilkskincare.com.  Also on March 8, 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.

 

A timely Response was received and determined to be complete on March 28, 2013.

 

Complainant submitted an Additional Submission, which was received by the Forum and found to be compliant on March 29, 2013.

 

On April 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Héctor A. Manoff 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.

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

1. Complainant owns United States federal trademark registrations for the marks SILKSKIN (Reg. No. 1,648,614 registered June 25, 1991) and for SILKSKIN ULTRA  (Reg. No. 2,300,593 registered December 14, 1999), both used in association with skin care products.

2. Respondent registered the <thesilkskincare.com> domain name, which includes the generic top-level domain (“gTLD”) “.com” and is otherwise an obvious variation of Complainant’s SILKSKIN mark.

3. Complainant can find no evidence that Respondent attempted to use the domain name for any legitimate purpose and is not offering any distinguishable goods or services in connection with this domain name.

4. Respondent is intentionally seeking to confuse Internet users into believing that Respondent is affiliated with, or sponsored by, Complainant.

5. Internet users that visit the domain name’s website are presented with advertisements for skin care products that are directly related to those products sold by Complainant.

 

B. Respondent

1. The disputed domain name is not identical nor confusingly similar to Complainant’s SILKSKIN trademark. The addition of the term “care” clearly and definitively delineates services rather than products. Furthermore, when Google-searching “silkskin” on the Internet the research results display the Complainant’s website on the top.

2. Silk Skin Care is a salon providing skin care services, having two locations in the state of California.

3. Silk Skin Care Salon belongs to Avalon International Beauty Group, a California Corporation incorporated in June 2009.

4. At its inception, the company was engaged in the business of professional skin care services. In the mid-2011, it signed a retailer agreement with Shiseido Americas Corporation and retails the Shiseido-branded cosmetic products.

5. Respondent has a legitimate interest in the disputed domain name.

6. Respondent registered the <thesilkskincare.com> domain name on or about December 7, 2009.

7. Complainant failed to establish Respondent’s registration and use of the disputed domain name in bad faith. Respondent uses the domain name for legitimate skin care services and has no intention to sell, rent or otherwise transfer the domain name to the Complainant or its competitors for commercial gain.

8. Respondent uses the disputed domain name to provide information about skin care products and services. However, it does not sell cosmetic products through the website.

 

C. Additional Submissions

Complainant

1.    Although Respondent claims that, since its inception, it was engaged in skin care services, it is presently a retailer of skin care products directly competing with those of Respondent.

2.    Complainant changed its name from California Cosmetics, Inc. to Silkskin, Inc. A review of the corporate name status in California would have revealed that a company was doing business in California under the name SilkSkin, Inc. This information is public and Respondent knew or should have known that the name chosen would cause confusion.

 

FINDINGS

Complainant is a cosmetic products manufacturer doing business in the state of California, which owns U.S. federal trademark registrations for the marks SILKSKIN and SILKSKIN ULTRA, both used in association with skin care products. The SILKSKIN mark was registered in 1991. Complainant further changed its corporate name from California Cosmetics, Inc. to SilkSkin, Inc., and owns the domain name <silkskin.com>.

 

Respondent runs a beauty salon business also in the state of California under the name Silk Skin Care. It started its business in 2009 and it provides skin care services. Furthermore, it sells skin care products of the Shiseido brand as from 2011. Respondent registered the disputed domain name in December 2009.

 

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.

 

Identical and/or Confusingly Similar

 

Complainant claims that it owns USPTO trademark registrations for the SILKSKIN mark, used in association with skin care products and submitted copy of the trademark certificates for SILKSKIN Reg. No. 1,648,614 registered June 25, 1991, and SILKSKIN ULTRA Reg. No. 2,300,593 registered December 14, 1999.

 

This Panel finds that a USPTO registration is a sufficient showing of rights in the SILKSKIN mark, especially because both parties reside in the United States.  Therefore, the Panel determines that Complainant sufficiently demonstrated its rights in the SILKSKIN mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).

 

Complainant contends that Respondent registered the confusingly similar <thesilkskincare.com> domain name, which includes the whole SILKSKIN mark plus the generic term “care” and gTLD “.com”, and prefaces the SILKSKIN mark with the word “the”.  Previous panels have found that, where, as in this case, a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar.  See Lowen Corp. v. Henry Chan, D2004-4030 (WIPO August 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN). The Panel agrees that the addition of a gTLD is irrelevant to this analysis.  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).  The Panel further agrees that the term “the” is generic and therefore does nothing to differentiate the domain name from the SILKSKIN mark.  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).  The Panel therefore concludes that the <thesilkskincare.com> domain name is confusingly similar to the SILKSKIN mark because the other additional term, “care,” is merely descriptive of the skin care products sold under the mark.  See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

Rights or Legitimate Interests

 

Before the burden shifts to Respondent to show it does have rights or legitimate interests in the disputed domain name, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in such domain name. 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.”).

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations: 

(a)  Respondent has chosen to take Complainants SILKSKIN mark and to use it in its domain name;

(b) Respondent has engaged in these activities without the consent or approval of Complainant.

Since the burden of proof has shifted to Respondent, one of the following circumstances should be verified in order to have Respondent as having rights or legitimate interests in the disputed domain name, according to Policy ¶4(c):

 

(i)            before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

Respondent’s <thesilkskincare.com> domain name is virtually identical to Complainant’s SILKSKIN mark and offers goods and services that are identical to those offered under Complainant’s mark.  The Panel finds that this competing use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the respondent’s use of the <thechipmerchant.net>, <chipmerchant.com>, and <chipmerchant.net> domain names was illegitimate because the domain names were “virtually identical” to the complainant’s mark, did not constitute a bona fide offering of goods or services, and implied that the respondent intended to trade off of the complainant’s “goodwill and reputation” to sell competing goods); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).

(ii)           you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;

The Panel notes that the WHOIS information lists the domain name’s registrant as “Silk Skin Care / Xiao Cho.”. According to the parties allegations and submitted evidence, Respondent registered the <thesilkskincare.com> domain name on December 7, 2009. Even though the Registrant appears as Silk Skin Care, the Respondent acknowledged that the domain name belongs to a company named Avalon International Beauty Group. According to evidence submitted by Respondent, this company was incorporated only six months prior to the date the disputed domain name was registered. Respondent further submitted business licenses that were granted to Avalon International Beauty Group to operate the Silk Skin Care Salon. These licenses are not dated, but they must have been granted after the aforementioned company’s incorporation date, that is, after June 2009. These licenses may prove that Avalon International Beauty Group was requesting permission to operate a business named “Silk Skin Care” less than six months before the date Respondent registered the domain name, but they are not affirmative evidence before the Panel that Respondent was ever “commonly known by” the disputed domain name prior to its registration of the disputed domain name.

In reaching this conclusion, the Panel cannot ignore the fact that Respondent chose to include a federal trademark registration in its domain name after eighteen years it had been registered with the USPTO. Moreover, it should also be noted that Complainant, in its Additional Submission, presented evidence that prove that it changed its corporate name from California Cosmetics, Inc. to SilkSkin, Inc. One example of this evidence is a USPTO printout of the ownership of the SILKSKIN mark, which shows that such a name change was recorded at the USPTO on March 3, 2009, even before Respondent had established its business. That name change was also recorded in the state of California, according to submitted evidence.

 

Thus, the Panel finds that Respondent is not “commonly known by” the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). See also AirFX, LLC v. ATTN AIRFX.COM, FA1104001384655 (Nat. Arb. Forum May 16, 2011) (finding that even though it appears that Respondent may be known by the disputed domain name, that it in fact has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii)”). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”).

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent contends that it is using the domain name exclusively to provide information to Internet users about its products.  Respondent avows that it is not seeing commercial gains through this domain name, as Respondent does not enter into commercial sales online.  Respondent admits that it does sell products such as those manufactured by Shiseido Americas Corp., but Respondent maintains that its product line is not sold online. The Panel disagrees with Respondent. From a glance at Respondent’s website, under the “menu” link, a list of the services provided by Respondent can be seen, along with the current price of several beauty treatments. Moreover, under the “contact” link, the casual Internet user can see full contact information of the website owner, including the addresses and directions to Respondent’s salons. This is hardly a noncommercial use.

 

Even though Respondent operates what appears to be a fully operative website related to the providing of skin care services at its salons in California, Respondent does not have the right to operate such services under the disputed domain name, incorporating Complainant’s entire registered mark, especially as Complainant was granted a trademark registration for the mark in Respondent’s country of domicile for products that are deeply related to Respondent’s services. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003)

 

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <thesilkskincare.com>  domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The <thesilkskincare.com>  domain name is virtually identical to Complainant’s SILKSKIN mark and resolves to a website that offers goods that compete with those offered under Complainant’s mark. The Panel finds that this creates a presumption that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because it is disrupting and diverting business from Complainant.  See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where the respondent and the complainant were in the same line of business in the same market area).

Moreover, Respondent registered the disputed domain name at a time when Complainant had a valid trademark registration, and Respondent has not come forward to rebut or explain why it chose to do so. Respondent’s constructive notice as to Complainant’s rights in the SILKSKIN mark is evidence that the domain name was registered in bad faith. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

 

Complainant also notes that Respondent, in its own Response, admits that it sells Shiseido Americas Corp. products that compete directly with Complainant’s SILKSKIN care products.  The Panel agrees that Respondent’s use of a confusingly similar domain name to inform the Internet user of Respondent’s competing products, while providing hyperlink advertisement to other competing products, illustrates Policy ¶ 4(b)(iv) bad faith use and registration.  See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites.  Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).

 

The Panel thus finds that Respondent registered and used the <thesilkskincare.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

 

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 <thesilkskincare.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Héctor A. Manoff, Panelist

Dated:  April 23, 2013

 

 

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