LOreal USA Creative Inc v. Syncopate.com
- Smart Names for Startups c/o DNS Services
Claim Number: FA0310000203944
Complainant is LOreal USA Creative Inc (“Complainant”)
represented by Robert L. Sherman of Paul, Hastings, Janofsky & Walker LLP, 75 E. 55th Street, New York, NY 10022. Respondent is Syncopate.com - Smart Names for Startups c/o DNS Services, 2 Townsend,
Bldg 1-500, San Francisco, CA 97104 (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <kiels.com> registered with Enom.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on October 20, 2003; the Forum received a hard copy of the
Complaint on October 21, 2003.
On
October 24, 2003, Enom confirmed by e-mail to the Forum that the domain name <kiels.com>
is registered with Enom and that Respondent is the current registrant of the
name. Enom has verified that Respondent is bound by the Enom 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
October 27, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 17, 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@kiels.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
November 24, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 <kiels.com>
domain name is confusingly similar to Complainant’s KIEHL’S mark.
2. Respondent does not have any rights or
legitimate interests in the <kiels.com> domain name.
3. Respondent registered and used the <kiels.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for the KIEHL’S mark (Reg. No. 1,618,321 registered on October
23, 1990) related to skin care products, namely, cleansing creams, scrubs,
masques, toners, conditioners and moisturizers; sunscreen and suntan oils and
creams; shaving creams, aftershave creams and lotions, body massage creams and
oils, bath oils and shower gels, talcum powders, lipsticks and lip balms;
hair-care products, namely, shampoos, conditioners and grooming preparations;
fragrances, namely, perfumes, colognes and essences. Additionally, Complainant
holds trademark registrations in a number of countries outside the United
States.
Respondent
registered the <kiels.com> domain name on February 1, 2002.
Respondent is using the disputed domain name to redirect Internet users to the
website at the <sephora.com> domain name, a website for a beauty supply
retailer that sells cosmetics and related products.
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
demonstrated its rights in the KIEHL’S 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
contends that Respondent’s <kiels.com> domain name is confusingly
similar to Complainant’s KIEHL’S mark because the disputed domain name
incorporates Complainant’s mark and merely omits the letter “h” and the
apostrophe from the mark. Neither the omission of the letter nor the apostrophe
significantly distinguishes Respondent’s domain name from Complainant’s
federally registered trademark. See
Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000)
(finding that a domain name which differs by only one letter from a trademark
has a greater tendency to be confusingly similar to the trademark where the
trademark is highly distinctive); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730
(Nat. Arb. Forum June 15, 2000) (finding that the domain name
<statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see
also Chi-Chi’s Inc. v. Rest.
Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name
<chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite
the omission of the apostrophe and hyphen from the mark).
Accordingly, the
Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Respondent has
not favored the Panel with a Response in this proceeding. Therefore, the Panel
accepts all of Complainant’s reasonable allegations and inferences as true. See
Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17,
2002) (finding that in the absence of a Response the Panel is free to make
inferences from the very failure to respond and assign greater weight to
certain circumstances than it might otherwise do); 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).
Moreover, based
on Respondent’s failure to contest the Complaint, the Panel presumes Respondent
lacks all rights to and legitimate interests in the disputed domain name under
Policy ¶ 4(a)(ii). See 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); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Respondent is
using the <kiels.com> name to redirect Internet users to the
website at the <sephora.com> domain name, a website for a beauty supply
retailer that sells cosmetics and related products. Respondent’s use of the
disputed domain name does not represent 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), because Respondent is using a domain name
confusingly similar to Complainant’s mark to compete directly with Complainant
in the beauty goods market. See Computerized Sec. Sys., Inc. d/b/a SAFLOK v.
Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s
appropriation of Complainant’s mark to market products that compete with
Complainant’s goods does not constitute a bona fide offering of goods and
services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715
(Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed
domain name to redirect Internet users to a financial services website, which
competed with Complainant, was not a bona fide offering of goods or services).
Furthermore,
Respondent has proffered no proof and there is no evidence in the record that
shows that Respondent is commonly known by KIELS or <kiels.com>.
Thus, the Panel finds that Respondent has failed to demonstrate any rights to
or legitimate inerests in the disputed domain name under 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 Gallup Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent
does not have rights in a domain name when Respondent is not known by the
mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been established.
Respondent’s use
of the <kiels.com> domain name, a domain name confusingly similar
to Complainant’s KIEHL’S mark, to offer beauty goods in direct competition with
Complainant’s business demonstrates that the disputed domain name was
registered and used in bad faith because the registration of a domain name
primarily for the purpose of disrupting the business of a competitor is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the
minor degree of variation from Complainant's marks suggests that Respondent,
Complainant’s competitor, registered the names primarily for the purpose of
disrupting Complainant's business); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business).
Moreover,
Respondent’s use of the <kiels.com> domain name establishes
Respondent’s bad faith registration and use because the attempt to attract
Internet users to Respondent’s website for commercial gain by creating a
likelihood of confusion with Complainant’s mark as to the source, sponsorship,
affiliation or endorsement of Respondent’ website evidences registration and
use in bad faith under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc.
d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that
Respondent’s use of the <saflock.com> domain name to offer goods
competing with Complainant’s illustrates Respondent’s bad faith registration
and use of the domain name, evidence of bad faith registration and use pursuant
to Policy 4(b)(iv)); see also Busy
Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000)
(finding bad faith where Respondent attempted to attract customers to its
website, <efitnesswholesale.com>, and created confusion by offering
similar products for sale as Complainant).
The Panel finds
that Complainant has established 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 <kiels.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 8, 2003
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