Dermalogica, Inc. and International
Dermal Institute, Inc. v. Domains to Develop
Claim Number: FA0307000175201
Complainant is Dermalogica, Inc. and International Dermal Institute, Inc., Torrance, CA (hereinafter
collectively as “Complainant”) represented by Dan J. Steele of Christie, Parker & Hale LLP. Respondent is Domains to Develop (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <dermatalogica.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 29, 2003; the Forum received a hard copy of the
Complaint on the same date.
On
August 18, 2003, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the Forum that the domain name <dermatalogica.com> is
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent
is the current registrant of the name. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
August 18, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 8, 2003 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@dermatalogica.com by e-mail.
Having
received no Response from Respondent, using the same contact details and methods
as were used for the Commencement Notification, the Forum transmitted to the
parties a Notification of Respondent Default.
On
September 16, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed John J. Upchurch 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."
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 makes the following assertions:
1. Respondent’s <dermatalogica.com>
domain name is confusingly similar to Complainant’s DERMALOGICA mark.
2. Respondent does not have any rights or
legitimate interests in the <dermatalogica.com> domain name.
3. Respondent registered and used the <dermatalogica.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
International Dermal Institute, Inc., provides evidence of ownership of a
trademark registration with the United States Patent and Trademark Office
(“USPTO”) for the DERMALOGICA mark (Reg. No. 1,539,948 registered on May 23,
1989) in relation to skin-care masks, lotions, cleansers, creams, moisturizers,
scrubs, gels and make-up remover. Complainant, Dermalogica, Inc., provides
evidence of an assignment of the rights in the mark to International Dermal
Institute, Inc. International Dermal Institute, Inc. asserts that it licenses
the mark to Dermalogica, Inc.
Respondent
registered the <dermatalogica.com> domain name on November 17,
2002. Respondent is using the disputed domain name to redirect Internet traffic
to a portal website that includes a pop-up advertisement offering links to
websites that offer Complainant’s products for sale.
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."
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.
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.
Complainant has
established its rights in the DERMALOGICA mark through registration with the
USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive and have acquired secondary meaning”).
Complainant
argues that Respondent’s <dermatalogica.com> domain name is
confusingly similar to Complainant’s DERMALOGICA mark because the disputed domain
name incorporates Complainant’s entire mark and merely adds the syllable “ta”
to the mark. The addition of two letters does not sufficiently differentiate
Respondent’s domain name from Complainant’s mark for purposes of Policy ¶
4(a)(i). See Victoria’s Secret v.
Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by
misspelling words and adding letters to words, a Respondent does not create a
distinct mark but nevertheless renders the domain name confusingly similar to
Complainant’s marks); see also
America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat.
Arb. Forum Mar. 16, 2000) (finding that Respondent’s domain name,
<americanonline.com>, is confusingly similar to Complainant’s famous
AMERICA ONLINE mark).
Accordingly, the
Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not submitted a Response in this proceeding. Therefore, the Panel accepts all
reasonable allegations and inferences in the Complaint to be true. See Do
the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of
a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertion in this regard”); see
also Desotec N.V. v. Jacobi Carbons
AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows
a presumption that Complainant’s allegations are true unless clearly
contradicted by the evidence).
Furthermore,
based on Respondent’s failure to contest the Complaint, the Panel presumes
Respondent lacks any rights to or legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii). See
Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that
Respondent has no rights or legitimate interests in the domain name because
Respondent never submitted a response or provided the Panel with evidence to
suggest otherwise); see also
Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4,
2000) (finding that Respondents’ failure to respond can be construed as an
admission that they have no legitimate interest in the domain names).
Respondent is
using the <dermatalogica.com> domain name to redirect Internet
users to a portal website, which features a pop-up advertisement that provides
links to websites offering Complainant’s products for sale. The use of a domain
name confusingly similar to Complainant’s marks to divert Internet traffic to
websites that offer Complainant’s products for sale does not suggest 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). See Geoffrey, Inc.
v. Toyrus.com, FA 150406 (Nat. Arb. Forum April 5, 2003) (holding that
Respondent’s use of the disputed domain name, a simple misspelling of
Complainant’s mark, to divert Internet users to a website that featured pop-up
advertisements and an Internet directory, was neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use of the domain
name); see also Wells Fargo & Co. v. Party Night Inc., FA 144647
(Nat. Arb. Forum March 18, 2003) (holding that Respondent’s
use of confusingly similar derivatives of Complainant’s WELLS FARGO mark to
divert Internet users to websites featuring pop-up advertisements was not a
bona fide offering of goods or services).
Moreover,
Respondent has offered no proof and there is no evidence in the record that
indicates Respondent is commonly known by either DERMATALOGICA or <dermatalogica.com>.
Thus, the Panel finds that Respondent has failed to establish any rights to or
legitimate interests in the disputed domain name in accord with Policy ¶
4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16,
2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has
been commonly known by the domain name prior to registration of the domain name
to prevail"); see also Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent’s use
of a domain name confusingly similar to Complainant’s DERMALOGICA mark to
provide links to websites that offer Complainant’s products for sale suggests
that Respondent is profiting from its diversion of Internet users from
Complainant’s website. The use demonstrates that the <dermatalogica.com>
domain name was registered and is being used in bad faith because Respondent is
capitalizing on the likelihood of confusion between the disputed domain name
and the DERMALOGICA mark. The Panel finds that Respondent has intentionally
attempted to attract Internet users to its website for commercial gain by
creating a likelihood of confusion with Complainant’s mark as to the source,
sponsorship, affiliation or endorsement of Respondent’s website, which
evidences bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with Complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Luck's Music Library v. Stellar Artist Mgmt.,
FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged
in bad faith use and registration by linking the domain name to a website that
offers services similar to Complainant’s services, intentionally attempting to
attract, for commercial gain, Internet users to its website by creating a
likelihood of confusion with Complainant’s marks).
Typosquatting is
the intentional registration of a domain name with a slight derivation from a
mark in which another party has rights. Respondent’s registration of a domain
name that includes a simple misspelling of Complainant’s mark indicates
typosquatting. Typosquatting itself is evidence of bad faith registration and
use pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling
of words with intent to intercept and siphon off traffic from its intended
destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith”).
The Panel finds
that Policy ¶ 4(a)(iii) has been established.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <dermatalogica.com> domain name be TRANSFERRED
from Respondent to Complainant, International Dermal Institute, Inc.
John J. Upchurch , Panelist
Dated: September 22, 2003
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page