Lifetouch, Inc. v. Schools Online Inc.
Claim
Number: FA0501000399497
Complainant is Lifetouch, Inc. (“Complainant”), represented
by Jodi A. DeSchane, of Faegre & Benson LLP,
2200 Wells Fargo Center, 90 South Seventh St., Minneapolis, MN, 55402. Respondent is Schools Online Inc. (“Respondent”), 300 Clematis St., Palm Beach,
FL 33403.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <schoolportraitslifetouch.com>, registered
with Moniker Online Services, 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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 10, 2005.
On
January 11, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <schoolportraitslifetouch.com>
is registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. Moniker Online Services, Inc. has verified that
Respondent is bound by the Moniker Online Services, Inc. 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
January 13, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 2, 2005 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@schoolportraitslifetouch.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 9, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <schoolportraitslifetouch.com>
domain name is confusingly similar to Complainant’s LIFETOUCH and LIFETOUCH
SCHOOL PORTRAITS marks.
2. Respondent does not have any rights or
legitimate interests in the <schoolportraitslifetouch.com> domain
name.
3. Respondent registered and used the <schoolportraitslifetouch.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
In 1936, a
school photography firm called National School Studios was founded. A decade later, National School Studios had
become one of the largest photography firms in the United States.
In 1984,
National School Studios changed its name to Lifetouch, Inc. Along with its wholly-owned subsidiaries,
Complainant provides professional portraits in addition to a variety of goods
and services within the photography industry.
Complainant maintains approximately 570 portrait studios and operates in
all 50 states and Canada.
In connection
with its photography-related goods and services, Complainant owns numerous
registrations for the LIFETOUCH mark with the United States Patent and
Trademark Office (“USPTO”), including registration numbers 1,631,112 (issued
Jan. 8, 1991 for “photofinishing services”), 1,638,363 (issued Mar. 19, 1991
for “photographs, bookmarks, calendars, achievement certificates, seating
charts, stickers, photo display folders and folios, school year books,
stationary-type portfolios and booklets relating to prom planning”), and
1,672,864 (issued Jan. 21, 1992 for “photography services; mail order services
in the field of stationary products, stemware, jewelry, clothing, and graduation
memorabilia”).
In addition to
the foregoing registrations for the LIFETOUCH mark, Complainant also registered
the LIFETOUCH SCHOOL PORTRAITS mark (Reg. No. 2,435,013) with the USPTO on
March 13, 2001, which is used in connection with “portrait photography
services.”
Complainant also
holds valid registrations for the LIFETOUCH mark and other derivative marks in
the following countries: Australia, Canada, Denmark, European Union, Ireland,
Japan, Mexico, New Zealand, Norway, South Korea, Spain, Switzerland, Taiwan,
and the United Kingdom.
Respondent
registered the disputed domain name, <schoolportraitslifetouch.com>,
on May 22, 2004. The domain name is
being used to connect Internet users to an online directory of portrait
photography services. The attached
website includes a variety of internal links, including two entitled “Family
Portrait” and “Portrait Studio,” which direct users to another page housed
within the above domain. These internal
links include a variety of commercial advertisements related to photographic
services and for enterprises located at the following domain names,
<glamourshotsusa.net>, <jcpenneyportraits.com>,
<targetportraits.com>, and <nextag.com>, among others.
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.
Under
the Policy, a mark registered with a legitimate governmental authority
establishes a presumption of rights in the mark. In the instant case, Complainant owns numerous registrations for
the LIFETOUCH and LIFETOUCH SCHOOL PORTRAITS marks with the United States Patent
and Trademark Office, as well as with various governing authorities
worldwide. Therefore, Complainant has
established a presumption of rights in the marks. The created presumption is unchallenged in this proceeding and
thus, the Panel finds Complainant has established rights in the LIFETOUCH and
LIFETOUCH SCHOOL PORTRAITS marks pursuant to paragraph 4(a)(i) of the
Policy. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
The
domain name, <schoolportraitslifetouch.com>, incorporates all
three words that Complainant uses in its LIFETOUCH SCHOOL PORTRAITS mark. Respondent has merely moved the term
“lifetouch,” which normally appears at the front-end of Complainant’s mark, to
the end of the words “school portraits.”
A domain name that incorporates a complainant’s entire mark, despite
reordering individual components of the mark, has been found to be confusingly
similar to the mark pursuant to paragraph 4(a)(i) of the Policy. Therefore, consistent with prior decisions,
the Panel finds that the domain name, <schoolportraitslifetouch.com>,
is confusingly similar to Complainant’s LIFETOUCH SCHOOL PORTRAITS mark
pursuant to paragraph 4(a)(i) of the Policy.
See NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26,
2001) (finding the domain name <nationalrentalcar.com> confusingly
similar to the NATIONAL CAR RENTAL mark because “merely inverting the terms of
a mark . . .is quite insufficient to dispel consumer confusion; the mark and
the resulting domain name are simply too similar to each other”); see also
CV Underground, LLC v. Gulf S. Ltd., FA 116732 (Nat. Arb. Forum Sept. 13,
2002) (finding that the domain name <atlantaunderground.com> was
confusingly similar to Complainant’s UNDERGROUND ATLANTA mark because it “uses
the same words, although in different order”).
Complainant has
established Policy ¶ 4(a)(i).
Respondent has
not responded, and by extension has not challenged, the assertions set forth in
the Complaint. Therefore, the Panel may
accept all reasonable allegations in the Complaint as true, unless clearly
contradicted by the evidence. See Allergan
Inc. v. MedBotox Inc., FA 170639 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has not challenged the allegations in the Complaint.
Under these circumstances it is appropriate for the Panel to accept all
reasonable allegations and inferences in the Complaint as true.”); 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).
Similarly, the
fact of Respondent’s failure to respond may be used as substantive evidence to
prove by implication that Respondent lacks rights and legitimate interests in
the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. 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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s reasonable
allegations are true.”).
Prior decisions
under the Policy have held that a domain name, which is identical or
confusingly similar to a third-party mark, that is used to provide advertisements
for enterprises that compete with the goods or services provided by the third
party under its mark, is not being used in connection with a bona fide
offering of goods or services pursuant to paragraph 4(c)(i) of the Policy. In the instant case, Respondent uses the
domain name, <schoolportraitslifetouch.com>, to connect Internet
users to an online directory of portrait photography services, and also
provides internal advertising at the domain name for enterprises engaged in
portrait photography services. The USPTO printout for Complainant’s LIFETOUCH
SCHOOL PORTRAITS mark states that Complainant’s mark is used in connection with
“portrait photography services.” See
USTPO Reg. No. 2,435,013. Because
Respondent is using a domain name, which is confusingly similar to
Complainant’s mark, for the purpose of offering internal advertisements for
enterprises in direct competition with the services offered by Complainant
under its mark, the Panel finds that Respondent is not using the name in
connection with a bona fide offering of goods or services pursuant to
paragraph 4(c)(i) of the Policy. See
Gardens Alive, Inc. v. D&S Linx, FA
203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent is using a domain name that is confusingly similar to
the MYSEASONS mark for commercial benefit by diverting Internet users to the
<thumbgreen.com> website, which sells goods and services similar to
Complainant's goods and services. Such use does not constitute a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Bank of
Am. Corp. v. Northwest Free Community Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).”)
The only
assertion set forth in the record that relates to whether Respondent is
commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of
the Policy is advanced by Complainant.
Complainant states, “[u]pon information and belief, Respondent is not
commonly known as schoolportraitslifetouch.com.” The evidence does not clearly contradict
Complainant’s statement and thus, the Panel finds that Respondent is not
commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of
the Policy. See Allergan
Inc. v. MedBotox Inc., FA 170639; see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398.
Respondent is using the
disputed domain name in a commercial manner and therefore, paragraph 4(c)(iii)
of the Policy is inapplicable. See
Schering Corp. v. NGS Enters., LTD,
FA 198013 (Nat. Arb.
Forum Nov. 7, 2003) (“[T]he Panel concludes that Respondent's
use is plainly commercial in nature, such that Policy ¶ 4(c)(iii) is in fact
inapplicable to this dispute.”); see also Avery
Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan. 10, 2003) (“Evidence
indicates that Respondent is profiting from the use of Complainant's mark,
therefore Policy ¶ 4(c)(iii)’s 'noncommercial or fair use' criteria are
inapplicable.”); see also Prudential Ins. Co. of Am. v.
Prudential Mortgage Loans, FA 103880 (Nat. Arb. Forum Mar. 20, 2002) (“No
contention is made that Respondent's site is noncommercial. Paragraph 4(c)(iii) is inapplicable to this
case.”); see also Nike, Inc. v. Dias, FA 135016
(Nat. Arb. Forum Jan. 7, 2002) (finding Policy
¶ 4(c)(iii) inapplicable because of the commercial nature of Respondent’s use of the disputed domain
name).
Complainant has
established Policy ¶ 4(a)(ii).
Bad faith
registration and use is established, pursuant to paragraph 4(b)(iv), when a
domain name registrant intentionally attempts to attract Internet users to its
online location for commercial gain, and does so by creating a likelihood of
confusion with the complainant’s mark. See
Policy ¶ 4(b)(iv).
By registering
the domain name, <schoolportraitslifetouch.com>, and attaching an
active website, Respondent has proved its intention of attracting Internet
users to its online location.
Domain names,
which are identical or confusingly similar to a third-party mark, that are used
to host advertisements and links to direct competitors of the goods or services
offered by a complainant under its mark are being used for commercial
gain. In the instant case, Respondent
is using the domain name to offer internally linked advertisements for
enterprises in direct competition with the services offered by Complainant
under its mark.
Moreover,
Respondent’s use of the disputed domain name has caused confusion with
Complainant’s mark because Respondent registered a name confusingly similar to
Complainant’s mark and used the name to offer content that directly relates to
the goods and services offered by Complainant under its mark. Therefore, in light of the foregoing,
Respondent registered and used the disputed domain name in violation of
paragraph 4(b)(iv) of the Policy. See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)); see also ESPN, Inc. v. Ballerini,
FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (presuming that Respondent received advertising
revenue where Respondent linked the disputed domain name to a third-party
website that invites users to play games and win prizes); see also eBay, Inc v. Progressive Life Awareness
Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where
Respondent is taking advantage of the recognition that eBay has created for its
mark and therefore profiting by diverting users seeking the eBay website to
Respondent’s site); 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); see also Identigene,
Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith
where Respondent's use of the domain name at issue to resolve to a website
where similar services are offered to Internet users is likely to confuse the
user into believing that Complainant is the source of or is sponsoring the services
offered at the site).
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 <schoolportraitslifetouch.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice Supreme Court NY (Ret.)
Dated: February 23, 2005