Tarte, Inc. v. RUSTY PETER
Claim Number: FA1701001713636
Complainant is Tarte, Inc. (“Complainant”), represented by Ian V. O'Neill of Brownstein Hyatt Farber Schreck, Colorado, USA. Respondent is RUSTY PETER (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tartenaturalcosmetics.com>, registered with Enom, Inc.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 20, 2017; the Forum received payment on January 20, 2017.
On January 25, 2017, Enom, Inc. confirmed by e-mail to the Forum that the <tartenaturalcosmetics.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 January 31, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2017 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@tartenaturalcosmetics.com. Also on January 31, 2017, 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 March 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant, Tarte, Inc., is a New York corporation that operates in the cosmetic industry. Complainant has registered the TARTE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,742,879, registered July 29, 2003), establishing rights in the mark. Respondent’s <tartenaturalcosmetics.com> is confusingly similar because it incorporates the TARTE mark and adds the descriptive terms “natural” and “cosmetics” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in <tartenaturalcosmetics.com>. Respondent is not commonly known by the domain name as the WHOIS record for the domain name lists “Rusty Peter” as registrant. Further, Respondent has copied the exact content from Complainant’s home website, <tarte.com>, and incorporated such content on the resolving website of <tartenaturalcosmetics.com>. Such use is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and used <tartenaturalcosmetics.com> in bad faith. Respondent’s passing off behavior, coupled with the consumer recognition and fame associated with Complainant’s TARTE mark, Respondent likely had actual and/or constructive knowledge of the mark and Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Tarte, Inc., is a New York corporation that operates in the cosmetic industry. Complainant has rights in the TARTE mark through registration with the USPTO (e.g., Reg. No. 2,742,879, registered July 29, 2003). Respondent’s <tartenaturalcosmetics.com> is confusingly similar to the TARTE mark.
Respondent, RUSTY PETER, registered the <tartenaturalcosmetics.com> domain name on September 16, 2016. Respondent has copied the exact content from Complainant’s home website, <tarte.com>, and incorporated such content on the resolving website.
Respondent has no rights or legitimate interests in <tartenaturalcosmetics.com>.
Respondent registered and uses <tartenaturalcosmetics.com> 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.
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(f), 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 (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 has rights in the TARTE mark through registration with the USPTO.See Trip Network Inc. v. Alviera, FA 914943 (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)).
Respondent’s <tartenaturalcosmetics.com> is confusingly similar because it incorporates the TARTE mark and adds the descriptive terms “natural” and “cosmetics” and the gTLD “.com.”
Respondent has no rights or legitimate interests in <tartenaturalcosmetics.com>. Respondent is not commonly known by the domain name. The WHOIS record lists “Rusty Peter” as registrant. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (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).
Respondent does not use <tartenaturalcosmetics.com> to make a bona fide offering of goods or services or any legitimate noncommercial or fair use. Respondent has used exact content from Complainant’s home website, <tarte.com>, on the resolving website of <tartenaturalcosmetics.com>. Incorporating a complainant’s content has been considered “passing off” behavior which cannot represent rights or legitimate interests. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself off as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Respondent registered and uses <tartenaturalcosmetics.com> in bad faith. Respondent uses the domain name to attempt to pass off as Complainant, presumably for commercial gain. Respondent also had actual knowledge of Complainant’s TARTE mark when registering the domain name.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tartenaturalcosmetics.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 15, 2017
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