national arbitration forum

 

DECISION

 

Morphe Inc. v. Michael Paviadakis / Crown Industries Inc.

Claim Number: FA1401001539409

PARTIES

Complainant is Morphe Inc. (“Complainant”), represented by Chris Tawil of Morphe Inc., California, USA.  Respondent is Michael Paviadakis / Crown Industries Inc. (“Respondent”), Indiana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <morphebrush.com>, <morphebrush.net>, and <morphebrushes.net>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 15, 2014; the National Arbitration Forum received payment on January 15, 2014.

 

On January 15, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <morphebrush.com>, <morphebrush.net>, and <morphebrushes.net> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  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 January 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2014 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@morphebrush.com, postmaster@morphebrush.net, postmaster@morphebrushes.net.  Also on January 17, 2014, 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 February 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

    Complainant makes the following contentions.

    1. Complainant, Morphe Inc., uses its MORPHE mark for various make-up brushes, make-up pallets, and other beauty items which are sold online, at its retail store, and at trade shows.
    2. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the MORPHE mark (Reg. No. 4,424,302, registered October 29, 2013; filed October 26, 2012).
    3. Respondent’s <morphebrush.com>, <morphebrush.net>, and <morphebrushes.net> domain names are confusingly similar to Complainant’s MORPHE mark.
    4. Respondent has no rights or legitimate interests in the disputed domain names.

                                          i.    Respondent is not commonly known by the disputed domain names.

                                         ii.    Respondent, a known competitor, registered the disputed domain names and began to divert traffic to their own competitor website <crownbrush.com> which sells similar products.

                                        iii.    Respondent now makes no active use of the domain names.

    1. Respondent has registered and is using the disputed domain names in bad faith.

                                          i.    Respondent, a known competitor, acquired the disputed domain names knowing Complainant is a competitor to disrupt Complainant’s business.

                                         ii.    Respondent, a known competitor, acquired the disputed domain names to knowingly divert consumer traffic from the domains in question to its own website <crownbrush.com>.

                                        iii.    Respondent now makes no active use of the domain names.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

1.    Complainant is a United States company engaged in the business of supplying various make-up brushes, make-up pallets, and other beauty items which are sold online, at its retail store, and at trade shows.

2.    Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the MORPHE mark (Reg. No. 4,424,302, registered October 29, 2013; filed October 26, 2012).

3.    Complainant has also established common law trademark rights in the MORPHE mark from at least October 26, 2012.

4.    Respondent registered the <morphebrush.com>, <morphebrush.net>, and <morphebrushes.net> domain names on February 1, 2013.

5.    Respondent is a competitor of Complainant and began to use the domain names to divert traffic to its own competitor website <crownbrush.com> which sells similar products to those of Complainant. Respondent now makes no active use of the domain names.

 

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

The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it uses its MORPHE mark for various make-up brushes, make-up pallets, and other beauty items which are sold online, at its retail store, and at trade shows. Complainant argues that it is the owner of a trademark registration with the USPTO for the MORPHE mark (Reg. No. 4,424,302, registered October 29, 2013; filed October 26, 2012). See Complainant’s Exhibit 3. The Panel finds that because Respondent appears to reside within the United States, Complainant’s filing and registration of the MORPHE mark with the USPTO sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Having regard to the totality of the evidence,  the Panel also finds that Complainant has established common law trademark rights to the MORHE mark from at least October 26, 2012, pre-dating the registration of the disputed domain names.

 

The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s MORPHE trademark. The Panel notes that Respondent uses Complainant’s MORPHE mark in its entirety and adds the generic term “brush” or “brushes” in forming these disputed domain names. The Panel holds that Respondent’s inclusion of a generic term and on one occasion in its plural form is irrelevant to a Policy ¶ 4(a)(i) determination. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Lastly, the Panel finds that Respondent adds the generic top-level domain (“gTLD”) “.com” or “.net” to Complainant’s mark in the disputed domain names. The Panel finds that Respondent’s addition of a gTLD does not distinguish the disputed domain names from Complainant’s mark under Policy ¶ 4(a)(i). See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Thus, the Panel concludes that Respondent’s <morphebrush.com>, <morphebrush.net>, and <morphebrushes.net> domain names are confusingly similar to Complainant’s MORPHE mark according to Policy ¶ 4(a)(i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).

 

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

 

(a) Respondent has chosen to take Complainant’s MORPHE trademark and to use it in its domain names without making any alterations other than adding generic expressions to the trademark;

(b) Respondent has then used the domain names to divert traffic to its own competitor website <crownbrush.com> which sells similar products to those of Complainant and now makes no active use of the domain names;

(c) Respondent has engaged in these activities without the consent or approval of Complainant;

(d) Complainant asserts that Respondent is not commonly known by the <morphebrush.com>, <morphebrush.net>, and <morphebrushes.net> domain names. Complainant argues that Respondent is a competitor and does business as “Crown Brush.” The Panel notes that the WHOIS information identifies “Michael Paviadakis / Crown Industries Inc.” as the registrant of the disputed domain names. The Panel also notes that Respondent fails to provide any information that it is known by the disputed domain names. Therefore, the Panel determines that Respondent is not commonly known under the <morphebrush.com>, <morphebrush.net>, and <morphebrushes.net> domain names pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);

(e) Complainant alleges that Respondent, a known competitor of Complainant, registered the <morphebrush.com>, <morphebrush.net>, and <morphebrushes.net> domain names and began to divert traffic to its own competitor website <crownbrush.com> which sells similar products. Having considered all of the evidence, the Panel agrees with Complainant that Respondent used the <morphebrush.com>, <morphebrush.net>, and <morphebrushes.net> domain names to divert consumers to Respondent’s own website to sell competing products, which is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”);

(f) The Panel also notes Respondent’s claim that the domain names presently have no resolving website. As the Panel agrees that the domain names have no active use, the Panel determines that Respondent has no present right or legitimate interest in these domain names under Policy ¶ 4(a)(ii). See Google Inc. v. asa dsye, FA 1519857 (Nat. Arb. Forum Oct. 21, 2013) (“The Panel notes that the website resolving from Respondent’s disputed domain name features the message, “Welcome! Site just created. Real content coming soon.” . . . The Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).”).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.

 

First, Complainant argues that Respondent, a known competitor of Complainant, acquired the <morphebrush.com>, <morphebrush.net>, and <morphebrushes.net> domain names to disrupt Complainant’s business. Complainant claims that Complainant and Respondent regularly attend the same trade shows for the purposes of selling beauty products and establishing a brand name. In Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001), the panel held that “a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner.” Having considered the whole of the evidence the Panel holds that Respondent is a competitor of Complainant and registered and is using the <morphebrush.com>, <morphebrush.net>, and <morphebrushes.net> domain names in bad faith under Policy ¶ 4(b)(iii).

 

Secondly, Complainant contends that Respondent, a known competitor of Complainant, acquired the <morphebrush.com>, <morphebrush.net>, and <morphebrushes.net> domain names knowingly to divert consumer traffic from the domain names in question to its own website <crownbrush.com>. The Panel agrees with Complainant and holds that Respondent is using the <morphebrush.com>, <morphebrush.net>, and <morphebrushes.net> domain names to divert consumers to its own competing website for commercial gain, and finds bad faith under Policy ¶ 4(b)(iv). See 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).

 

Thirdly, the Panel notes that Complainant submits that none of the disputed domain names have any current and active use. In Microsoft Corp. v. DAINA TRADING COMPANY LIMITED, FA 1533432 (Nat. Arb. Forum Jan. 2, 2014) the panel held that bad faith could be implied through a period of inactive holding of a domain name. The Panel agrees that the holding of these inactive domain names evidences Policy ¶ 4(a)(iii) bad faith given the alleged prior use of the domain names to host competing enterprises.

 

Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the MORPHE mark and in view of the conduct of the Respondent when using them, Respondent registered and used the domain names in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

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 <morphebrush.com>, <morphebrush.net>, and <morphebrushes.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  February 12, 2014

 

 

 

 

 

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