DECISION

 

Lifetouch, Inc. v. Fox Photographics c/o Larry Fox

Claim Number: FA0502000414667

 

PARTIES

Complainant is Lifetouch, Inc., Eden Prairie, MN (“Complainant”) represented by Jodi A. DeSchane, of Faegre and Benson LLP, 2200 Wells Fargo Center, 90 South Seventh Street, Minneapolis, MN 55402. Respondent is Fox Photographics c/o Larry Fox, Hinton, WV (“Respondent”), represented by Joseph Aucremanne, P.O. Box 669, 407 Second Avenue, Hinton, WV 25951.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lifetouch.us>, registered with Go Daddy Software, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 2, 2005; the Forum received a hard copy of the Complaint on February 3, 2005.

 

On February 3, 2005, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <lifetouch.us> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On February 8, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 28, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

A timely Response was received and determined to be complete on February 28, 2005.

 

On March 5, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

            Complainant and its wholly-owned subsidiaries (collectively “Lifetouch”) provide professional portraits and related photography services for preschools and schools, houses of worship and the retail market.  With approximately 570 portrait studios and operations in all fifty United States and Canada, Lifetouch is the largest employee-owned photography company in the world.

            Complainant holds numerous valid United States trademark registrations for the LIFETOUCH mark.  Internationally, Complainant holds valid registrations in a number of foreign countries. 

            Since 1995, Complainant has operated an interactive resource and informational web site at <lifetouch.com>.

            The LIFETOUCH mark is a commercial icon that has for many years been extensively used and advertised.  As a result, the LIFETOUCH mark enjoys a high degree of recognition with the public in the United States as a premier school portrait provider.  In recognition of the duration and extent of promoting the mark, and the high degree of recognition of the mark, the mark is a famous mark as defined by law.

            On or about May 5, 2002, Respondent registered the domain name <lifetouch.us>.  Complainant sent letters advising Respondent that it is the owner of the well-known LIFETOUCH mark and that Respondent’s registration and use of the domain name violates Complainant’s rights.

            The domain name <lifetouch.us> expired on May 5, 2004.  Respondent again registered the domain name <lifetouch.us>, and again Complainant sent a cease and desist letter to Respondent.  No response was ever received by Complainant from any of the cease and desist letters addressed to Respondent.

            Complainant has never authorized or licensed Respondent to use the mark, LIFETOUCH. 

            The domain name <lifetouch.us> is identical to Complainant’s famous LIFETOUCH mark.

            Respondent has no rights or legitimate interests in the domain name <lifetouch.us>.

            Respondent registered the domain name in bad faith.   Respondent is, presumably, as it name would suggest, in the photographic business making it unlikely that Respondent did not have actual knowledge of Complainant’s rights. 

           

B. Respondent

            Respondent filed a Response containing a letter from Respondent’s Counsel to Counsel for Complainant stating that Respondent will not contest the Complaint along with the Response of Larry Fox stating that “The Respondent chooses not to contest the allegations in the aforesaid Amended Complaint. The Respondent intends and is taking efforts to withdraw the domain name in issue in this matter: lifetouch.us.”

 

C. Additional Submissions

            Complainant filed on February 8, 2005, an Amended Complaint in Accordance With usTLD Dispute Resolution Policy.

FINDINGS

1.      Complainant has rights in the LIFETOUCH mark for photographs and photography services based upon Registrations with the United States Patent and Trademark Office with the first registrations on March 5, 1985 and with a number of other registrations thereafter in the United States and elsewhere.

2.      Respondent registered the domain name <lifetouch.us> on or about May 5, 2002.

3.      After the registration expired, Respondent again registered the domain name <lifetouch.us> in the year 2004.

4.      Respondent fails to contest the Complaint.

5.      Complainant’s mark, LIFETOUCH, is identical to Respondent’s domain name <lifetouch.us>.

6.      Respondent has no rights or legitimate interests in the domain name <lifetouch.us>.

7.      Respondent registered and used the domain name <lifetouch.us> in bad faith.

 

DISCUSSION

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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

      In order to prevail in a domain name dispute of this type, Complainant must prove that a trademark or service mark in which Complainant has rights is identical or confusingly similar to the domain name under consideration in the dispute.  See usTLD Dispute Resolution Policy, ¶4(a)(i).

      Complainant has rights in the mark, LIFETOUCH, as a result of the Registrations with the United States Patent and Trademark Office for the LIFETOUCH mark dating back to 1985.  See Janus Int’l Holding Co. v. Rademacher, D202-0201 (WIPO Mar, 5, 2002) finding that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive, and that a respondent has the burden of refuting this assumption.  See also Men’s Wearhouse, Inc. v. Wick, FA117861 (Nat. Arb. Forum Sept. 16, 2002).

      The domain name and mark are identical.  The domain name adds the country-code top-level domain (“ccTLD”) “.us”to the end of the mark.  The addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the Policy.  See Tropar Mfg. Co. v. TSB, FA127701 (Nat. Arb. Forum Dec. 4, 2002) which found that since the addition of the country-code “.us” failed to add any distinguishing characteristic to the domain name, the <tropar.us> domain name was identical to the complainant’s TROPAR mark.  See also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical.

      Complainant prevails under Policy, ¶ 4(a)(i).

 

Rights or Legitimate Interests

      When a complaint is properly served, the respondent, in order to prevail, is obliged to “Specifically respond to the statements and allegations contained in the complaint and include any and all bases for the Respondent to retain registration and use of the disputed domain name.” See Rules for the usTLD Dispute Resolution Policy, ¶5(c)(i).

      “If a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.” See Rule 14(b).

      In this proceeding the Respondent did not respond to the statements and allegations contained in the Complaint.  Respondent presented a letter from Respondent’s Counsel to Counsel for Complainant stating that Respondent did not contest the Complaint.  The Response in this case consisted of the Response of Larry Fox, which stated as follows “The Respondent chooses not to contest the allegations in the aforesaid Amended Complaint.  The Respondent intends and is taking efforts to withdraw the domain name in issue in this matter, lifetouch.us.”  Nothing more was presented by Respondent.

      Under general principles of law, averments in a pleading to which a responsive pleading is required, are admitted when not denied in the responsive pleading. See Federal Rules of Civil Procedure, Rule 8(d).  This is similar to English Rules Under the Judicature Act and to the practice of the States.

      When a response is filed in any domain name dispute case, even when a respondent makes an attempt to answer a complainant’s case, a respondent must come forward with concrete evidence rebutting a complainant’s assertion that the respondent has no rights and legitimate interests in the domain name. Panels have found that the burden shifts to respondent to provide credible evidence that substantiates a respondent’s claim of rights and legitimate interests since such evidence is uniquely within the knowledge and control of the respondent.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).  When a respondent presents no concrete evidence, the conclusion can be drawn that respondent in the disputed domain name case possesses no rights and legitimate interests. 

      In addition to stating that the Complaint was not contested, Counsel for Respondent states “Mr. Fox”(Respondent) “will be withdrawing lifetouch.us as a registered domain name.”

      The fact that Respondent does not contest the Complaint and is willing to withdraw the domain name, is taken as an admission that Respondent has no rights and legitimate interests in the domain name <lifetouch.us>.  See Colgate-Palmolive Co. v. Domains For Sale, FA96248 (Nat. Arb. Forum Jan. 18, 2001) which found that respondent’s willingness to transfer the disputed domain name is evidence of its lack of rights and legitimate interests in the domain name.  See also Taco Bell Corp. v. Tango Bella, D2000-1229 (WIPO Dec. 12, 2000).

      Complainant prevails under Policy, ¶4(a)(ii).

     

      Registration and Use in Bad Faith

      Complainant avers that Respondent, who is in the photographic business, had actual notice as well as constructive notice of Complainant’s mark registered with the United States Patent and Trademark Office, prior to registration of <lifetouch.us>. 

      Respondent’s election not to contest this averment, stands as an admission that the averment is true for purposes of this proceeding.

      It is not required under the usTLD Resolution Policy that Complainant allege and prove both bad faith registration and bad faith use. Bad faith registration when alleged and proven is sufficient. See ¶4(a)(ii).

      The Panel finds that Respondent was aware of the Complainant’s mark when registering the domain name and was aware of the deception and confusion that would inevitably follow if Respondent used the domain name.  This factual situation constitutes bad faith registration. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000);  See also Samsonite Corp. v. Colony Holding, FA94313 (Nat. Arb. Forum Apr. 17, 2000) which held that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration. See also Orange Glo Int’l v. Blume, FA118313 (Nat. Arb. Forum Oct. 4, 2002).

      Complainant prevails under Policy, ¶4(a)(iii).

 

DECISION

                  The Decision of the Panel is that the Domain Name, <lifetouch.us> be Transferred from Respondent, Fox Photographics c/o Larry Fox, to Complainant, Lifetouch, Inc.

                 

 

Tyrus R. Atkinson, Jr., Panelist
Dated: March 21, 2005

 

 

 

 

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