SOLTA MEDICAL, INC., A Division of Valeant Pharmaceuticals North America LLC v. Huy Nguyen
Claim Number: FA1601001658583
Complainant is SOLTA MEDICAL, INC., A Division of Valeant Pharmaceuticals North America LLC (“Complainant”), represented by Kathryn E. Smith of Wood Herron & Evans LLP, Ohio, USA. Respondent is Huy Nguyen (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thermageusa.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically January 28, 2016; the Forum received payment January 28, 2016.
On January 28, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thermageusa.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and 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 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2016, 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@thermageusa.com. Also on January 29, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On February 24, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 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.
Complainant’s Contentions in this Proceeding:
Complainant uses the THERMAGE mark in connection with its sale of medical devices for skin treatments. Complainant registered the THERMAGE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,534,746, registered January 29, 2002), which demonstrates rights in the mark. See Compl., at Attached Annex 4. Respondent’s <thermageusa.com> domain name is confusingly similar to the THERMAGE mark as it incorporates the mark in its entirety while adding the geographic abbreviation “usa” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <thermageusa.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is not making a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use through the <thermageusa.com> domain name. Rather, the domain name resolves to a website that is visually identical to Complainant’s own website and offers to sell Complainant’s goods. See Compl., at Attached Annex 5 (resolving website of the <thermageusa.com> domain name).
Respondent
is using the <thermageusa.com> domain name in bad faith.
Respondent’s use of the website disrupts Complainant’s legitimate business
purposes by diverting Complainant’s clients to Respondent’s site. Respondent
has also attempted to attract Internet users to its site for commercial gain by
creating confusion as to the source, sponsorship, affiliation, or endorsement
of the website. Further, based on the close similarity of the name and
Respondent’s disruptive use, Complainant maintains that Respondent had actual
knowledge of Complainant’s THERMAGE mark and Complainant’s rights therein.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a response. The Panel notes that Respondent registered the <thermageusa.com> domain name May 26, 2015.
Complainant established that it has rights to and legitimate interests in the disputed domain name.
Respondent has no such rights or legitimate interests in the disputed domain name.
Respondent knowingly registered a domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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.
Given 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(f), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 or Confusingly Similar:
Complainant uses the THERMAGE mark in connection with its sale of medical devices for skin treatments. Complainant offered proof it registered the THERMAGE mark with the USPTO (e.g., Reg. No. 2,534,746, registered Jan. 29, 2002), which Complainant contends demonstrates rights in the mark. See Compl., at Attached Annex 4. Registration with the USPTO is sufficient to establish rights in a mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Therefore, the Panel finds that Complainant demonstrated rights in the THERMAGE mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <thermageusa.com> domain name is confusingly similar to the THERMAGE mark as it incorporates the mark in its entirety while adding the geographic abbreviation “usa” and the gTLD “.com.” Such alterations to marks is insufficient in overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel therefore agrees that Respondent’s <thermageusa.com> domain name is confusingly similar to Complainant’s THERMAGE mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 argues that Respondent has no rights or legitimate interests in the <thermageusa.com> domain name. First, Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information regarding the disputed domain name lists “Huy Nguyen” as registrant. Complainant also asserts that it has not given Respondent permission to use its THERMAGE mark. Therefore, in light of the available evidence, the Panel agrees that no basis exists to find Respondent commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant argues that Respondent is not making a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use through the <thermageusa.com> domain name. Rather, Complainant contends that the domain name resolves to a website that is visually identical to Complainant’s own website, <thermage.com>. See Compl., at Attached Annex 5. Respondent’s website purports to sell Complainant’s products. Id. Complainant further contends that Respondent’s source code states “Mirrored from thermage.com/ by HTTrack Website Copier,” which Complainant alleges shows that Respondent used for its website the source code from Complainant’s website. See Compl., at Attached Annex 6. A respondent’s use of a complainant’s mark either to sell Complainant’s goods or to pass itself off as a complainant is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use. See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names). Therefore, the Panel agrees that Respondent’s <thermageuse.com> domain name is not making a bona fide offering of goods or services and it is not making a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends that Respondent’s registration and subsequent use of the <thermageusa.com> domain name disrupts Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the resolving website’s inclusion of offers to sell Complainant’s goods. Where a respondent diverts a complainant’s clients to a respondent’s own website in order to sell complainant’s goods, such use constitutes bad faith disruption under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent’s registration and use of the <thermageusa.com> domain name supports findings of bad faith pursuant to Policy ¶ 4(b)(iii).
Further, Complainant contends that Respondent attempted to attract Internet users to its site for commercial gain by creating confusion as to the purported source, sponsorship, affiliation, or endorsement of the website. Complainant contends that Respondent attempted to mislead Internet users by passing off its website as belonging to or being associated with Complainant by visually copying Complainant’s own website and even Complainant’s source code. See Compl., at Attached Annexes 5 and 6. The Panel agrees with Complainant and holds that such Internet user confusion, which subsequently results in redirection to Respondent’s website with offers to sell Complainant’s products, also supports findings of bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Finally, Complainant argues that Respondent had actual knowledge of Complainant's rights in the THERMAGE mark. Complainant argues that Respondent's offering of Complainant's own products at the resolving website and the website’s similarity to Complainant’s own website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although constructive notice does not support findings of bad faith, the Panel finds here that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) [after concluding that] respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thermageusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 10, 2016.
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