Den-Mat Corporation v. Industrading Ltd.
Claim
Number: FA0502000430751
Complainant is Den-Mat Corporation (“Complainant”), represented
by Lawrence G. Townsend, of Owen, Wickersham & Erickson, 455 Market St., 19th Floor, San Francisco, CA 94105. Respondent is Industrading Ltd. (“Respondent”), BVI, VG.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <lumineers.com>, registered with Domaindiscover.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
24, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 28, 2005.
On
February 25, 2005, Domaindiscover confirmed by e-mail to the National
Arbitration Forum that the domain name <lumineers.com> is
registered with Domaindiscover and that Respondent is the current registrant of
the name. Domaindiscover has verified that Respondent is bound by the Domaindiscover
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
March 2, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 22, 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@lumineers.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
March 28, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Louis E.
Condon 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 <lumineers.com>
domain name is identical to Complainant’s LUMINEERS mark.
2. Respondent does not have any rights or
legitimate interests in the <lumineers.com> domain name.
3. Respondent registered and used the <lumineers.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Den-Mat Corporation, is the marketer of
LUMINEERS, a new pain-free way to get dental veneers, which are sold nationally
through dental offices. Complainant has
filed several trademark registration applications with the United States Patent
and Trademark Office for the LUMINEERS mark (Ser. No. 76/608,209 filed August
23, 2004; Ser. No. 78/534,003 filed December 16, 2004; and Ser. No. 78/534,525
filed December 17, 2004).
Complainant begain marketing its LUMINEERS dental product in June 2004,
and since then they have become one of Complainant’s top-selling brands. Complainant has spent significant amounts of
money introducting the product to the public and dentists through national
broadcast television, professional dental and consumer magazines, and through
Complainant’s websites at the <denmat.com> and <cerinate.com>
domain names. Through the popularity of
the product, Complainant also received free press for its LUMINEERS via
television, radio, newspapers and magazines and the Internet. Complainant estimates that its LUMINEERS
marketing campaign has reached approximately 200 million consumers. Complainant also believes that the goodwill
established in its LUMINEERS mark has made the mark one of Complainant’s most
valuable assets.
Respondent registered the <lumineers.com> domain name on
June 14, 2004, one day after Complainant launched its national marketing
campaign. The disputed domain name
forwards Internet users to Complainant’s website at the <denmat.com>
domain name, presumably for Respondent’s personal benefit through referral
fees.
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.
While Complainant’s LUMINEERS mark is not yet registered with a government
authority, Complainant has filed multiple applications for registration with
the United States Patent and Trademark Office.
However, the Policy does not require registration of a mark for
Complainant to claim rights to its mark under Policy ¶ 4(a)(i). 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 Great Plains Metromall, LLC v. Creach,
FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a
trademark be registered by a governmental authority for such rights to
exist.”).
Complainant
contends that its LUMINEERS are sold nationally through dental offices and have
become one of Complainant’s top selling brands. Complainant further claims that it has spent a large amount of
money introducing the product to the public and dentists through national broadcast
television, professional dental and consumer magazines and Complainant’s
websites. Complainant also states that
it has received free press for the product on television, radio, in newspapers
and magazines, and on the Internet and argues that its LUMINEERS mark is one of
its most valuable assets. In light of
this evidence, the Panel finds that Complainant has established secondary
meaning in the mark and that Complainant therefore has common law rights in the
mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary meaning was established); see also 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).
The <lumineers.com>
domain name registered by Respondent is identical to Complainant’s LUMINEERS
mark since the only difference is the addition of the generic top-level domain
(gTLD) “.com.” It has been widely held
under the Policy that the addition of only a gTLD to Complainant’s mark is
inadequate to distinguish the disputed domain name from the mark. Therefore, the Panel concludes that the
disputed domain name is confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See 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 or confusingly similar); 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).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the allegations set forth by Complainant in the
Complaint. In this circumstance, the Panel
is entitled to accept all reasonable allegations and inferences in the
Complaint as true. See 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 Ziegenfelder
Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two
inferences based on Respondent’s failure to respond: (1) Respondent does not
deny the facts asserted by Complainant, and (2) Respondent does not deny
conclusions which Complainant asserts can be drawn from the facts).
Complainant
asserts that Respondent does not have rights or legitimate interests in the <lumineers.com>
domain name that contains Complainant’s LUMINEERS mark in its entirety. Once Complainant makes a prima facie case
in support of its allegations, the burden is shifted to Respondent to show that
it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). However, Respondent has not responded to
Complainant’s allegations and has, thus, presented no proof of Respondent’s
rights or legitimate interests.
Therefore, due to Respondent’s failure to respond to the Complaint, the
Panel will assume that Respondent lacks rights and legitimate interests in the
disputed domain name. 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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that, by not submitting a Response, Respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
Complainant
alleges that Respondent has done nothing more with the <lumineers.com>
domain name than to forward Internet users to Complainant’s website at the
<denmat.com> domain name. It is
hard to conceive that Respondent would be so altruistic as to pay for a domain
name registration just to forward Internet users to Complainant’s website
without any benefit to Respondent.
Thus, the Panel presumes that Respondent receives commissions for
redirecting Internet users to Complainant’s website through Respondent’s domain
name. It is the Panel’s determination
that Respondent’s use of a domain name identical to Complainant’s common law
mark to divert Internet users to Complainant’s website for Respondent’s own
profit is not a use in connection with 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). See Telstra Corp. v. Nuclear Marshmallow,
D2000-0003 (WIPO Feb.18, 2000) (finding (i) the fact that Complainant has not
licensed or otherwise permitted Respondent to use any of its trademarks and
(ii) the fact that the word TELSTRA appears to be an invented word, and as such
is not one traders would legitimately choose unless seeking to create an
impression of an association with Complainant, demonstrate that Respondent
lacks rights or legitimate interests in the domain name); see also eBay
Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the
"use of complainant’s entire mark in infringing domain names makes it
difficult to infer a legitimate use"); see also State Farm Mut. Auto. Ins. Co. v. LaFaive,
FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“[U]nauthorized providing of
information and services under a mark owned by a third party cannot be said to
be the bona fide offering of goods or services”).
Complainant
contends that Respondent has never been commonly known by Complainant’s
LUMINEERS mark or the <lumineers.com> domain name. Complainant further claims that it has never
licensed or authorized Respondent’s use of its trademark. Respondent has offered no evidence to refute
Complainant’s assertions that Respondent is not commonly known by the disputed
domain name. Thus, the Panel determines
that Respondent lacks rights and legitimate interests in the disputed domain
name pursuant to 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 Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where Respondent was not commonly known by the mark and
never applied for a license or permission from Complainant to use the
trademarked name).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
asserts that Respondent is using the <lumineers.com> domain name
to forward Internet users to Complainant’s website. The Panel infers that Respondent derives commercial benefit
through referral fees for diverting Internet users through its domain name to
Complainant’s website. Such use
constitutes an attempt by Respondent to commercially benefit from attracting
Internet users interested in locating Complainant’s LUMINEERS products and
services, who type in Complainant’s mark followed by the common gTLD
“.com.” Although the diversion is to
Complainant’s website, it seems improper to allow Respondent to benefit from
use of Complainant’s mark. Thus, the
Panel determines that Respondent’s attempts to benefit from the goodwill
surrounding Complainant’s mark by attracting Internet users to Respondent’s
domain name through a likelihood of confusion with complainant’s mark and
diverting them for commercial gain is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). 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 State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb.
Forum Oct. 11, 2000) (finding that Respondent registered the domain name
<statefarmnews.com> in bad faith because Respondent intended to use
Complainant’s marks to attract the public to the website without permission
from Complainant); see also Perot
Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding
bad faith where the domain name in question is obviously connected with
Complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain).
While the
situations listed under Policy ¶ 4(b) are circumstances in which there may be a
finding of bad faith registration and use, it is widely understood under the
Policy that this list is not intended to be exhaustive. Therefore, the Panel has decided to examine
additional factors in making its determination of bad faith registration and
use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that, in determining if a domain name has been
registered in bad faith, the Panel must look at the “totality of
circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are
intended to be illustrative, rather than exclusive.”).
Respondent
registered a domain name that contains Complainant’s LUMINEERS mark in its
entirety and used the domain name to forward Internet users to Complainant’s
website, presumably for Respondent’s profit.
This suggests that Respondent chose the disputed domain name based on
the goodwill surrounding Complainant’s mark.
Registration of a domain name that includes a mark which Respondent
reasonably should have known belonged to Complainant is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb.
Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when
Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively.”); see also Entrepreneur Media, Inc. v.
Smith, 279
F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse."); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <lumineers.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
April 11, 2005
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