Dermalogica, Inc. and The International
Dermal Institute, Inc. v. Pimpa Subsomboon
Claim
Number: FA0503000448935
Complainants Dermalogica, Inc. and The International Dermal Institute, Inc. (“Complainant”), are
represented by David J. Steele, of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000 Newport Beach, CA 92660. Respondent is Pimpa Subsomboon (“Respondent”), 33/548 Soi Chokchai4, Ladprao,
Bangkok 10230, Thailand.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <dermalogica-directory.com>, registered
with Go Daddy Software, 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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 29, 2005.
On
March 30, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <dermalogica-directory.com>
is registered with Go Daddy Software, Inc. and that 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 ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
March 30, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 19, 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@dermalogica-directory.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
April 26, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch 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 <dermalogica-directory.com>
domain name is confusingly similar to Complainant’s DERMALOGICA mark.
2. Respondent does not have any rights or
legitimate interests in the <dermalogica-directory.com> domain
name.
3. Respondent registered and used the <dermalogica-directory.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
Dermalogica, Inc. was co-founded in Los Angeles in 1986 by the founder of The
International Dermal Institute. All
DERMALOGICA products are researched and developed by The International Dermal
Institute. The International Dermal
Institute, Inc., has licensed its DERMALOGICA mark to Dermalogica,
(collectively “Complainant”).
Complainant has used the DERMALOGICA mark in commerce in the United
States and around the world since as early as 1986 in connection with a wide
range of innovative skin care products.
Complainant owns trademark rights to the DERMALOGICA mark through
registration with the United States Patent and Trademark Office (Reg. No.
1,539,948, issued May 23, 1989).
Complainant also
owns trademark registration rights in the DERMALOGICA mark in numerous
countries such as Thailand, Argentina, Bulgaria, Cyprus, Singapore, Malaysia,
Lebanon and Mexico. Complainant
operates an extensive website at the <dermalogica.com> domain which
provides a wealth of information regarding its DERMALOGICA products, locations
and contact information for one of the thousands of skin care professionals
offering Complainant’s products, general skin care information and information
about Dermalogica, Inc.
Respondent
registered the disputed domain name on March 8, 2005. Respondent is using the domain name to redirect Internet users to
its commercial website where advertisements and an Internet directory
containing links to skin care products similar to those offered by Complainant
are offered.
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 that it has rights in the DERMALOGICA mark through registration
with the United States Patent and Trademark Office and through continuous use
of its mark in commerce for the last nineteen years. 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.”); see also 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).
The <dermalogica-directory.com>
domain name registered by Respondent is confusingly similar to Complainant’s
DERMALOGICA mark because the domain name incorporates Complainant’s DERMALOGICA
mark in its entirety and deviates from it with the addition of the hyphen and
the generic or descriptive phrase “directory.”
Neither the mere addition of a hyphen nor the addition of a generic or
descriptive word to a registered mark negates the confusing similarity of
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145
(eResolution May 3, 2000) (finding that a hyphen between words of Complainant’s
registered mark is confusingly similar); see also InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000)
(finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s
INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing
features”); see also Westfield
Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the
<westfieldshopping.com> domain name confusingly similar because the
WESTFIELD mark was the dominant element); see also Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding
the registration and use of multiple domain names incorporating the distinctive
and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic
words such as ‘chat’ and ‘financial’ to be confusingly similar to Complainant’s
marks and likely to mislead Internet users into believing that products and
services offered by Respondents are being sponsored or endorsed by YAHOO! or
GeoCities, given the similarity of the names and products and services
offered).
Moreover,
the addition of the generic top-level domain “.com” is irrelevant in
determining whether the disputed domain names are confusingly similar to
Complainant’s DERMALOGICA 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 Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) was satisfied).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the disputed domain
name. The burden shifts to Respondent
to show that it does have rights or legitimate interests once Complainant establishes
a prima facie case pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to
the Complaint, it is assumed that Respondent lacks rights and legitimate
interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where Complainant has asserted that Respondent has no rights or
legitimate interests with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); 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 interests in the domain names).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as true
because Respondent has not submitted a response. 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s
failure to respond allows all reasonable inferences of fact in the allegations
of the Complaint to be deemed 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).
Respondent is
using the <dermalogica-directory.com> domain name to redirect
Internet users to a commercial website that features advertising and an
Internet directory containing links to skin care products similar to those
offered by Complainant. In the absence
of a response, the Panel is assuming that Respondent receives click-through
fees by redirecting Internet users to third party websites through the use of
the disputed domain name. Respondent’s
use of a domain name that is confusingly similar to Complainant’s DERMALOGICA
mark to redirect Internet users interested in Complainant’s products to a
search engine website that offers links to competing websites is not a use in
connection with 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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t
would be unconscionable to find a bona fide offering of services in a
respondent’s operation of a web-site using a domain name which is confusingly
similar to the Complainant’s mark and for the same business.”); see also
Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12,
2003) (finding that Respondent did not have rights or legitimate interests in a
domain name that used Complainant’s mark and redirected Internet users to
website that pays domain name registrants for referring those users to its
search engine and pop-up advertisements); 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).
Furthermore,
Respondent is not commonly known by the disputed domain name, and does not have
Complainant’s authorization to use Complainant’s DERMALOGICA mark. Respondent has not presented any evidence
and there is no proof in the record suggesting that Respondent is commonly
known by the disputed domain name.
Therefore, Respondent has not established rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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 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 satisfied.
Respondent is
incorporating Complainant’s mark in its domain name to lead Internet users to a
website that offers similar skin care-related products. The Panel finds that Respondent is
intentionally creating a likelihood of confusion with Complainant’s mark to
attract Internet users to Respondent’s website for Respondent’s commercial
gain, pursuant to Policy ¶ 4(b)(iv). See
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); 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, intentionally attempting to attract, for commercial
gain, Internet users to its website by creating a likelihood of confusion with
Complainant’s marks).
Furthermore,
Respondent registered the confusingly similar domain name for the purpose of
disrupting Complainant’s business by redirecting Internet traffic intended for
Complainant to Respondent’s search engine website, where links to skin care
companies offering similar goods are displayed. Registration of a domain name confusingly similar to
Complainant’s mark for the purpose of disrupting Complainant’s business is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb.
Forum Dec. 23, 2000) (concluding that domain names were registered and used in
bad faith where Respondent and Complainant were in the same line of business in
the same market area); 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 intentionally registered a domain name that is likely
to confuse Internet users and cause them to believe any site hosted at the
domain name would be affiliated with or endorsed by Complainant. This demonstrates bad faith under the
Policy. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that bad faith registration and use where it is "inconceivable
that the respondent could make any active use of the disputed domain names
without creating a false impression of association with the Complainant");
see also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the
"domain names are so obviously connected with the Complainants that the
use or registration by anyone other than Complainants suggests 'opportunistic
bad faith'").
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <dermalogica-directory.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: May 16, 2005
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