AHAVA NA, LLC v. Beauty Rose a/k/a Mark
Hirsch
Claim
Number: FA0504000462441
Complainant is AHAVA NA, LLC (“Complainant”), represented
by Sidney D. Bluming, of Bluming Freiman Franco LLP,
141 East 45th Street-19th Floor, New York, NY 10017. Respondent is Beauty Rose a/k/a Mark Hirsch (“Respondent”), 14 Joan Lane, Monsey, NY 10952.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <ahava-usa.com>, registered with Gkg.net,
Inc.
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.
Honorable
Paul A. Dorf (Ret.), as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 13, 2005.
On
April 15, 2005, Gkg.net, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <ahava-usa.com> is registered with Gkg.net,
Inc. and that Respondent is the current registrant of the name. Gkg.net, Inc.
has verified that Respondent is bound by the Gkg.net, 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
April 18, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 9, 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@ahava-usa.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
May 17, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Honorable Paul
A. Dorf (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 <ahava-usa.com>
domain name is confusingly similar to Complainant’s AHAVA mark.
2. Respondent does not have any rights or
legitimate interests in the <ahava-usa.com> domain name.
3. Respondent registered and used the <ahava-usa.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
AHAVA NA, LLC, is the exclusive distributor of Dead Sea Laboratories, Inc.
(“DSL”) products in the United States and Canada. DSL produces Ahava, an internationally renowned skincare product
line formulated with both Dead Sea minerals and water.
Complainant,
through DSL, has registered the AHAVA mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 1,790,035 issued August 21, 1993) for use
in connection with the distribution of retail sales of mud masks, bath salts,
facial creams, body creams, eye creams hand creams, hair shampoos, body
lotions, facial moisturizers, make up remover, facial fresheners, facial toners
and facial soaps.
Respondent
registered the <ahava-usa.com> domain name on September 6,
2001. Respondent’s domain name resolves
to a website that sells various AHAVA skincare products.
Under the
distributorship agreement between Complainant and DSL, Complainant is
authorized to institute and conduct legal actions against unauthorized
trademark infringers. Thus, for the
purposes of this current action, the Panel will treat Complainant as having the
same rights and interests in the AHAVA mark as DSL.
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 rights in the AHAVA mark through registration of the mark with the
USPTO. 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 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).
Respondent’s
<ahava-usa.com> domain name is
confusingly similar to Complainant’s AHAVA mark. Respondent’s domain name incorporates Complainant’s mark in its
entirety and merely adds a hyphen and the word “usa.” Furthermore, Respondent’s domain name adds the generic top-level
domain “.com.” Such small changes are
not enough to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)
(finding confusing similarity where the
domain name in dispute contains the identical mark of the complainant combined
with a generic word or term); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) (“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is .
. . without legal significance since use of a gTLD is required of domain name
registrants.”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Thus, the Panel may accept all reasonable allegations and assertions set
forth by Complainant as true and accurate.
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 the complainant’s allegations are true unless clearly
contradicted by the evidence).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
construe Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <ahava-usa.com> domain name
pursuant to Policy ¶ 4(a)(ii). See 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); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Respondent is
using the confusingly similar <ahava-usa.com> domain name to
operate a website that advertises the sale of Complainant’s skincare products
without authorization from Complainant.
Respondent’s use of the disputed domain name 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 Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec.
10, 2000) (finding that domain names used to sell the complainant’s goods
without the complainant’s authority is not a bona fide use); see also
K&N Eng’g., Inc. v. Weinberger, FA 114414 (Nat. Arb. Forum July 25,
2002) (holding that the respondent, who was not an authorized distributor of
the complainant’s products, lacked rights or legitimate interests in a domain
name incorporating the complainant’s mark).
Furthermore,
nothing in the WHOIS record indicates that Respondent is commonly known by the
disputed domain name or authorized to register domain names featuring
Complainant’s AHAVA mark. Thus,
Respondent lacks rights and legitimate interests in the <ahava-usa.com>
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 interests where the respondent was not commonly known
by the mark and never applied for a license or permission from the complainant
to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that because Respondent’s <ahava-usa.com> domain name is confusingly similar to Complainant’s AHAVA mark,
consumers accessing Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting website.
Furthermore, the website offers Complainant’s products. Thus, Complainant’s commercial use of the
disputed domain name 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 the respondent registered and
used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see also Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar.
13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by selling
used Fanuc parts and robots on website <fanuc.com> because customers
visiting the site were confused as to the relationship between the respondent
and the complainant).
Additionally,
Respondent is using the <ahava-usa.com> domain name to sell
Complainant’s products without Complainant’s consent or authorization. The Panel finds that Respondent’s use of the
disputed domain name constitutes disruption and is further evidence that
Respondent registered and used the disputed domain name in bad faith pursuant
to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2
Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of
Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith
use under Policy ¶ 4(b)(iii).”); see also Wall v. Silva, FA 105899 (Nat.
Arb. Forum Apr. 29, 2002) (finding that despite respondent’s claim that it used the <josephinewall.com> domain name,
which was identical to complainant’s JOSEPHINE WALL mark, to help complainant
become popular in the United States, the respondent’s use of the domain name to
sell the complainant’s artwork constituted disruption pursuant to Policy ¶
4(b)(iii)).
Furthermore,
Respondent registered the <ahava-usa.com> domain name with actual
or constructive knowledge of Complainant’s rights in the AHAVA mark. Complainant’s registration of the AHAVA mark
with the United States Patent and Trademark Office operates as constructive
knowledge of Complainant’s rights to the world. Therefore, the Panel finds Respondent’s registration of a domain
name that is confusingly similar to Complainant’s mark despite actual or
constructive knowledge of Complainant’s rights 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 Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“[T]he complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
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 <ahava-usa.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
May 31, 2005
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