Lifetouch Inc. v. John Phills
Claim Number: FA1412001596160
Complainant is Lifetouch Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is John Phills (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lifetouchcouponcode.com> (the Domain Name) , 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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2014; the National Arbitration Forum received payment on December 19, 2014.
On December 22, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <lifetouchcouponcode.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 December 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 12, 2015 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@lifetouchcouponcode.com. Also on December 22, 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 15 January 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne 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
The Complainant's Submissions can be summarised as follows:
The Complainant owns the LIFETOUCH mark, used in relation to photographic products and services since at least 1984. It owns registrations for this mark in a number of countries including the US, Australia, Canada, the European Union, Japan, Mexico, New Zealand, South Korea, Switzerland and Taiwan. It is the largest employee owned photography company in the world. It is a famous mark.
It has operated a web site at lifetouch.com since 1995.
The Respondent registered the Domain Name on or about November 2014 years after the Complainant's mark was registered. The Respondent has no trade mark rights in the name. It has no authorisation to use the Complainant's LIFETOUCH mark. There is no evidence that the Domain Name was registered for a legitimate reason.
Respondent's prominent use of the LIFETOUCH mark on its site shows an intent to attract people to the site based on the use of the mark increasing the value of the site and giving the false impression that the site is owned, operated, controlled, sponsored or associated with the Complainant. Content is similar to content on the Complainant’s own site and tags are used to attract people to the site which are full of language related to photography. The site has links related to payperclick advertising mentioning photography and has commercial advertisements for the Complainant's competitors.
The Domain Name is confusingly similar to the Complainant's LIFETOUCH mark incorporating it in its entirety. The addition of the generic term 'coupon code' does not stop the Domain Name giving the same commercial impression as the Complainant's LIFETOUCH mark. It is confusingly similar to the Complainant's registered mark.
Respondent does not have any rights or legitimate interest in the Domain Name. The registration of a domain name with the purpose of redirecting Internet users interested in another's products is not legitimate. No permission has been given to use the mark. The site is used for commercial purposes and uses the Complainant's mark without authorisation which is not legitimate fair use.
Respondent must be aware of the Complainant and its rights as the site purports to be the web site of the Complainant offering the same services. By using the site for advertising for the Complainant's competitors the Respondent has allowed the Domain Name to be used to attract for commercial gain Internet Users who are likely to be confused as to the Complainant's affiliation with the Respondent's site. This is bad faith.
B. Respondent
<<Summarize Respondent's contentions here>>
Respondent failed to submit a Response in this proceeding.
The Complainant owns the LIFETOUCH mark, used in relation to photographic products and services since at least 1984. It owns registrations for this mark in a number of countries including the United States.
The Domain Name has been used in relation to a web site using the LIFETOUCH mark in relation to photography and containing advertisements for competitors of the Complainant and links related to photography.
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.”).
Apart from the .com suffix which is not taken into account for the purposes of the Policy, the Domain Name consists of the Complainant’s LIFETOUCH registered trade mark and the generic words “coupon" and "code”. The addition of the words “coupon” and “code” do not serve to distinguish the Domain Name from the Complainant’s mark. See WarnerBros Entm't Inc.;New Line Prods. Inc. & DC Comics v Procount. Bus Servs. FA 360942 (Nat. Arb. Forum Dec 22, 2004)(finding that the addition of one or more generic terms and a gTLD as well as the omission of spaces fails to create a meaningful distinction between the disputed domain name and the mark within it because "such additions do not disguise the fact that the dominant features of the domain names are complainant's marks and each domain name is therefore confusingly similar to the marks pursuant to Policy 4 (a) (i))The Panellist finds that the Domain Name is confusingly similar to the Complainant’s registered trade mark LIFETOUCH for the reasons given above and as such the Complainant satisfies para 4(a) (i) of the Policy.
The Panellist has had an opportunity to review the Respondent's web site and is of the opinion that it gives the impression that it is an official site of the Complainant. It was not clear to the panellist upon a quick review of the site that it was not the site of the Complainant or authorised. The use of the Domain Name in relation to a site using the LIFETOUCH mark and photography with wording giving the impression that the user has found the Complainant makes the web site misleading and the Respondent is passing itself off as connected with the Complainant. Passing off is evidence that the Respondent lacks rights or legitimate interests in the Domain Name. See Am. Int'l Group Inc. v Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent's attempts to pass itself off as the Complainant online was evidence that the Respondent has no rights or legitimate interests in the disputed domain name); See also Bank of A. Corp v Nw Free Cmty Access, FA 180704 (Nat Arb Forum Sept 30, 2003)("Respondent's demonstrated intent to divert Internet users seeking Complainant’s web site to a web site of Respondent and for Respondent's benefit is not a bona fide offering of goods and services under 4(c) 9i) and it is not a legitimate non-commercial or fair use under Policy 4(c)(iii).
Additionally, Respondent uses the site to point to advertisements to other businesses some of which directly compete with the Complainant. This is not a bona fide offering of goods of services or a legitimate non-commercial use. See AM Int'l Group Inc. v Benjamin, FA 9442542 (Nat. Arb Forum May 11, 2007)(finding that the respondent's use of a confusingly similar domain name to advertise real estate services which competed with the complainant's business did not constitute a bona fide offering of goods and services under Policy 4 (c) (iii).
As such the panellist finds that the Respondent lacks any rights or legitimate interests in the Domain Name.
Having found that the Respondent's web site is confusing and misleading customers into believing it is associated with the Complainant and noting the use of metatags relating to photography in relation to the LIFETOUCH mark, the panellist believes that the Respondent is attempting to pass itself off as the Complainant and has intentionally attempted to attract for commercial gain internet users to its web site by creating a likelihood of confusion by using the Complainant's mark as to the source or endorsement of its web site under Para 4 (b) (iv) of the Policy. See AOL LLC v AIM Profiles, FA 964479 (Nat Arb Forum May 20, 2007)(finding that the respondent registered and use the disputed domain name in bad faith pursuant to Policy 4(b) (iv) because the Respondent was commercially gaining from the likelihood of confusion between the complainant AIM mark and the competing instant messaging products and services advertised on the Respondent's web site which resolved from the disputed domain name). Further the content of the web site shows that the Respondent had actual knowledge of the Complainant's mark See Pfizer Inc. v Suger D2002-0187 (WIPO Apr 24, 2002)(finding that because the link between the complainant's mark and the content advertised on the respondent's web site was obvious and the respondent must have known about the complainant's mark when it registered the subject domain name.) As such the panellist finds that the Domain Name has been registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lifetouchcouponcode.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: January 21, 2015
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