Valerie Saxion's Silver Creek Labs, Ltd.
v. LaPorte Holdings, Inc.
Claim
Number: FA0501000399498
Complainant is Valerie Saxion's Silver Creek Labs, Ltd. (“Complainant”),
represented by Michael Abejuela, of Dozier Internet Law, P.C.,
301 Concourse Blvd., West Shore III, Suite 300, Glen Allen, VA 23059. Respondent is LaPorte Holdings, Inc. (“Respondent”), 2202 S. Figueroa St. Ste.
721, Los Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <valeriesaxion.com> and<valeriesaxon.com>,
registered with Nameking.com, 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 National Arbitration Forum electronically on January
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 10, 2005.
On
January 8, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <valeriesaxion.com> and <valeriesaxon.com>
are registered with Nameking.com, Inc. and that Respondent is the current
registrant of the names. Nameking.com, Inc. has verified that Respondent is
bound by the Nameking.com, 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 14, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 3, 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@valeriesaxion.com and
postmaster@valeriesaxon.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 10., 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <valeriesaxion.com>
domain name is identical and Respondent’s <valeriesaxon.com>
domain name is confusingly similar to Complainant’s VALERIE SAXION mark.
2. Respondent does not have any rights or
legitimate interests in the <valeriesaxion.com> and <valeriesaxon.com>
domain names.
3. Respondent registered and used the <valeriesaxion.com>
and <valeriesaxon.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Valerie Saxion’s Silver Creek Labs, Ltd., has used its VALERIE SAXION mark in
connection with goods and services for the health and beauty industries since
1994. Complainant’s company was formed
and co-founded by Dr. Valerie Saxion in 1993 and offers products developed by
Dr. Saxion. Complainant offers over
seventy health and beauty products bearing the VALERIE SAXION mark.
Respondent
registered the <valeriesaxion.com> and <valeriesaxon.com>
domain names on April 10, 2003 and January 21, 2004, respectively. Respondent is using the disputed domain
names to divert Internet users to Respondent’s commercial website where links
to various sites offering health and beauty products similar to those offered
by Complainant are displayed.
Respondent’s website also displays pop-up advertisements and links to
other websites that offer adult gambling related services.
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 common law rights in the VALERIE SAXION mark through continuous use
of the mark in commerce for over ten years.
See Keppel TatLee Bank v.
Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and
substantial use of the said name [<keppelbank.com>] in connection with
its banking business, it has acquired rights under the common law); see also
Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan.
21, 2003) (finding that Complainant had provided evidence that it had valuable
goodwill in the <minorleaguebaseball.com> domain name, establishing
common law rights in the MINOR LEAGUE BASEBALL mark).
Furthermore, Complainant does not need to produce evidence of a
trademark registration with the United States Patent and Trademark Office
because Complainant is able to demonstrate common-law rights in the mark. See SeekAmerica Networks Inc.
v. Masood, D2000-0131
(WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's
trademark or service mark be registered by a government authority or agency for
such rights to exist); see also
British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the Policy “does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names” and applying the Policy to “unregistered trademarks and service marks”);
see also Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not
require Complainant to demonstrate ‘exclusive rights,’ but only that
Complainant has a bona fide basis for making the Complaint in the first place).
Respondent’s <valeriesaxion.com>
domain name is identical to Complainant’s VALERIE SAXION mark because
neither the omission of the space between the words “valerie” and “saxion” nor
the addition of the generic top-level domain “.com” is sufficient to
distinguish the domain name from Complainant’s mark. See Pomellato S.p.A
v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain (“gTLD”)
“.com” after the name POMELLATO is not relevant); see also Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com>
domain name is identical to Complainant’s BODY BY VICTORIA mark); see also Snow Fun, Inc. v. O'Connor, FA 96578
(Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name
<termquote.com> is identical to Complainant’s TERMQUOTE mark); see
also Wembley Nat’l Stadium Ltd. v.
Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name
<wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see
also Tech. Props., Inc. v. Burris,
FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name
<radioshack.net> is identical to Complainant’s mark, RADIO SHACK).
The Panel also
finds Repondent’s <valeriesaxon.com> domain name is confusingly
similar to Complainant’s VALERIE SAXION mark because the domain name
incorporates Complainant’s mark and only deviates with the omission of a space
between “valerie” and “saxion,” the omission of the letter “i” and the gTLD
“.com.” The mere omission of a letter
and the addition of a gTLD does not significantly distinguish the domain name
from the mark. See Croatia Airlines v. Kijong, AF-0302
(eResolution Sept. 25, 2000) (finding that the domain name
<croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES
trademark); see also 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 Am. Airlines, Inc. v. Data Art Corp., FA 94908 (Nat. Arb. Forum July 11, 2000)
(finding <americanairline.com> "effectively identical and certainly
confusingly similar" to Complainant's AMERICAN AIRLINES registered marks).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(i).
Complainant
alleges that Respondent does not have rights or legitimate interests in the
disputed domain names. When Complainant
establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden
shifts to Respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to
the Complaint, the Panel infers that Respondent lacks rights and legitimate
interests in the disputed domain names.
See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once Complainant asserts that Respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has no
rights or legitimate interests is sufficient to shift the burden of proof to
Respondent to demonstrate that such rights or legitimate interests do exist); 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).
Additionally, if
Complainant makes a prima facie case and Respondent does not respond,
the Panel may accept all reasonable inferences and assertions in the Complaint
as true. See 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.”); 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); see also
Charles Jourdan AG. V. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply to the Complaint).
Respondent is using
the disputed domain names, which incorporate Complainant’s mark, to redirect
Internet users searching under Complainant’s mark to Respondent’s website. Respondent’s website displays links to
various websites selling health and beauty products similar to those offered by
Complainant. Additionally, Internet
users are exposed to pop-up advertisements and links to unrelated
websites. Respondent’s use of domain
names that are identical or confusingly similar to Complainant’s VALERIE SAXION
mark to redirect Internet users interested in Complainant’s products and
services to other commercial websites is not a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Geoffrey, Inc. v. Toyrus.com, FA
150406 (Nat. Arb. Forum Apr. 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 Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb.10, 2003) (holding that Respondent’s use of the
disputed domain name to host a series of hyperlinks and a banner advertisement
was neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name).
Respondent has
not offered any proof, and there is no indication in the record suggesting that
Respondent is commonly known by the <valeriesaxion.com>
or <valeriesaxon.com> domain name. Thus, Respondent has not established rights or legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
Respondent
registered the disputed domain names for the purpose of disrupting
Complainant’s business by redirecting Internet traffic intended for Complainant
to Respondent’s website, which displays links to businesses that offer health
and beauty products similar to those offered by Complainant. Respondent’s use of the domain names to
divert Internet users to Complainant’s competitors is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See 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); see
also EBAY, Inc. v. MEOdesigns,
D2000-1368 (Dec. 15, 2000) (finding that Respondent registered and used the
domain name <eebay.com> in bad faith where Respondent has used the domain
name to promote competing auction sites); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that
Respondent has diverted business from Complainant to a competitor’s website in
violation of Policy ¶ 4(b)(iii)).
Respondent is
using the <valeriesaxion.com> and <valeriesaxon.com>
domain names to divert Internet users searching under Complainant’s mark to
Respondent’s website, which provides links to various commercial websites that
sell health and beauty products similar to those offered by Complainant. The Panel infers that Respondent receives
click-through fees through the use of the disputed domain names. Respondent’s commercial use of the disputed
domain names constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding
that Respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain
name to attract Internet users to its commercial website); see also 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 Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where Respondent directed Internet users
seeking Complainant’s site to its own website for commercial gain).
In addition, the
disputed domain names resolve to a website that display links to various
websites that offer adult gambling related services. Respondent’s use of Complainant’s mark to redirect Internet users
to adult websites tarnishes Complainant’s goodwill in the VALERIE SAXION mark
and is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Wells Fargo & Co.
v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar.18, 2003) (finding that
Respondent’s tarnishing use of the disputed domain names to redirect
Internet users to adult-oriented websites was evidence that the domain names
were being used in bad faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000)
(finding bad faith where Respondent attracted users to his website for
commercial gain and linked his website to pornographic websites).
The Panel finds
that Complainant fulfilled 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 <valeriesaxion.com> and <valeriesaxon.com>
domain names be TRANSFERRED from Respondent to Complainant.
Charles K. McCotter, Jr. (Ret.), Panelist
Dated:
February 24, 2005
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