Ontel Products Corporation v. Mihir Busa / RIMIBUSA INC
Claim Number: FA2005001897176
Complainant is Ontel Products Corporation (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, United States. Respondent is Mihir Busa / RIMIBUSA INC (“Respondent”), Texas, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pinkarmornailgel.com>, registered with NameCheap, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Luz Helena Villamil Jimenez as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2020; the Forum received payment on May 20, 2020.
On May 21, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <pinkarmornailgel.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 May 27, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 2020 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@pinkarmornailgel.com. Also on May 27, 2020, 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.
A timely Response was received and determined to be complete on June 15, 2020.
On June 19, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luz Helena Villamil Jimenez 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
This Complaint is based on the ownership of the trademark PINK ARMOR first registered by the Complainant in the United States of America on June 18, 2013. The trademark PINK ARMOR is registered as well in other jurisdictions around the world such as China, South Africa and New Zealand, and applied for registration in Australia. Complainant is a United States company founded in 1994, and it develops, markets, and distributes various consumer goods, including the PINK ARMOR nail gel offered under the trademark PINK ARMOR.
The <pinkarmornailgel.com> domain name was registered on February 15, 2018 and it was last updated on January 16, 2020. The Domain Name under dispute was registered without Complainant’s knowledge or permission.
Respondent uses the Domain Name to resolve to a website where it offers for sale unauthorized nail gel products under the product heading “PINK ARMOR” and product name “PINK ARMOR NAIL GEL.” Evidence of said products offered was submitted with the Complaint.
The Domain Name and associated website attempt to mislead consumers to believe that it offers Complainant’s authentic PINK ARMOR nail gel products because the products are advertised as the identical product sold by Ontel. Indeed, the images of the products offered on Respondent’s website contain clear and unauthorized copies of Complainant’s PINK ARMOR mark, product and copyright protected images, including Complainant’s own commercial for its product.
Upon information and belief, Respondent’s products are counterfeit versions of Ontel’s authentic products. Complainant has never authorized the Respondent’s use of its PINK ARMOR mark and has not authorized this entity to sell any product on Ontel’s behalf and has not authorized the use of Complainant’s copyright protected images and commercial.
B. Respondent
In turn, Respondent states that he communicated to the Complainant that he was unaware of this situation as the domain and the website were acquired on <flippa.com> from a seller, thinking it would have no such issues because it was through <flippa.com>. Respondent adds that he also submitted all the related documentation via email on June 2nd 2020, and that he accepts the remedy and agrees with transferring the domain over immediately as final resolution with no other related further cases or inquiries against Respondent.
The Panel has thoroughly reviewed the Complaint together with the evidence submitted to support the allegations, and based on all the documents, the Panel finds:
- That Complainant is the exclusive owner of the trademark PINK ARMOR which is duly registered and in force in the United States and abroad.
- That the disputed domain name <pinkarmornailgel.com> does resolve to a website where nail gel products are offered for sale under the trademark “PINK ARMOR” and product name “PINK ARMOR NAIL GEL.”
- That in addition to the use of Complainant's trademark PINK ARMOR, Respondent’s website contain copies of Complainant’s PINK ARMOR mark, product and copyright protected images, including Complainant’s own commercial for its product.
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.
Complainant demonstrated with the trademark registration copies submitted with the Complaint that it is the exclusive owner of the trademark PINK ARMOR. Furthermore, complainant fully demonstrated that he uses this trademark together with the generic words nail gel, words that were added to the disputed domain <pinkarmornailgel.com> most probably with the intention of building, should the need arise, an argument to state that the domain in question is not similar to the trademark PINK ARMOR.
In this concern, the Panel is in agreement with Complainant in that the disputed domain name is confusingly similar to Complainant’s PINK ARMOR mark. Moreover, the domain name <pinkarmornailgel.com> contains Complainant’s PINK ARMOR mark in its entirety, differing from the registered mark PINK ARMOR only in the addition of the descriptive terms “nail gel”, a fact that suggest that it is affiliated with Complainant as being one of the authorized online retail outlets for Complainant’s own PINK ARMOR nail gel products. This is so, because as established before, it was fully demonstrated with the Complaint that the disputed domain resolves to a website where nail gel products are offered for sale under the trademark “PINK ARMOR” and product name “PINK ARMOR NAIL GEL”. The images submitted by Complainant showing those on Respondent’s website contain clear copies of Complainant’s PINK ARMOR mark, product and copyright protected images, including Complainant’s own commercial for its product.
The foregoing said, it is evident for the Panel that indeed the domain is likely to be viewed as incorporating the PINK ARMOR trademark by visitors to Respondent’s website, a circumstance that no doubt may lead consumers to erroneously believe either that the website <pinkarmornailgel.com> belongs to the Claimant, or that there is a business association between the Claimant and the Respondent.
In light of the foregoing, the Panel considers that the Policy requirement in Paragraph 4(a)(i) is met as to the fact that the disputed domain name <pinkarmornailgel.com> is confusingly similar to the trademark PINK ARMOR owned by the Complainant.
Once again, the Panel concurs with the Complainant’s assertion as regards the fact that the usage of the disputed domain name by the Respondent cannot be held as a bona fide offering of goods and services.
As mentioned before, the fact that Respondent is using the disputed domain name to resolve to a website that purports to be an online store for Complainant’s PINK ARMOR nail gel products, misappropriating the PINK ARMOR trademark design and images of Complainant’s authentic products for its website in order to sell directly competing products, clearly indicates that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
In light of the foregoing, the Panel establishes that the Policy requirement in Paragraph 4(a)(ii) is met inasmuch as Respondent has no rights or legitimate interests in respect of the domain name <pinkarmornailgel.com>.
According to Paragraph 4 (b) of the Policy, when certain circumstances are present in a given case they shall be evidence of the registration and use of a domain name in bad faith. Among such circumstances the Policy mentions in Paragraph 4 (b)(iv) using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant 's mark as to the source, sponsorship, affiliation, or endorsement of you’re the Respondent’s site or location or of a product or service on the Respondent’s web site or location.
In the present case, the extreme similarity of the disputed domain name with the registered trademark PINK ARMOR clearly indicates that there is a prima facie intention of the Respondent to attract internet users for commercial gain. The Panel concurs with the Complainant in that there should have been no reason for using and registering the disputed domain name other than to 1) disrupt the business of Complainant by causing people to mistakenly believe they are visiting an authorized seller of authentic PINK ARMOR products, or 2) attract for commercial gain people to Respondent, falsely believing it is Complainant’s online location, by creating a likelihood of confusion with Complainant’s PINK ARMOR Marks.
Complainant is also right when asserting that Respondent registered a domain name virtually identical to Complainant’s famous mark but adding the words “NAIL GEL”, which happen to describe authentic goods sold under the PINK ARMOR mark by Complainant. In the present case, the disputed domain name strongly imply a direct relationship with Complainant, and shows opportunistic bad faith. Further, by attempting to pass itself off to consumers as if owned, affiliated or sponsored by Complainant, Respondent is taking advantage of the goodwill established in Complainant’s PINK ARMOR mark. Respondent is attempting to commercially gain by attracting consumers to its website by creating a likelihood of confusion regarding the source of Respondent’s website and the products being referenced on its website.
Due to all the above, it is imperative to conclude that the disputed domain name <pinkarmornailgel.com> has been registered and is being used in bad faith under Policy ¶ 4(a)(iii), since Respondent did not submit any evidence to support his assertions at the very least to try to show a touch of good 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 <pinkarmornailgel.com> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil Jimenez, Panelist
Dated: July 3, 2020
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