Dermalogica, Inc. and The International
Dermal Institute, Inc. v. Unasi, Inc.
Claim
Number: FA0505000485936
Complainant is Dermalogica, Inc. and The International Dermal Institute, Inc. (collectively “Complainant”),
represented by David J. Steele, of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000, Newport Beach, CA 92660. Respondent is Unasi, Inc. (“Respondent”), PO Box 2440, Panama City, Panama.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <dermatalogica.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
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.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
25, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 26, 2005.
On
May 27, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to
the National Arbitration Forum that the domain name <dermatalogica.com>
is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent
is the current registrant of the name. Iholdings.com,
Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com 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
May 31, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 20, 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@dermatalogica.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
June 22, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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 <dermatalogica.com>
domain name is confusingly similar to Complainant’s DERMALOGICA mark.
2. Respondent does not have any rights or
legitimate interests in the <dermatalogica.com> domain name.
3. Respondent registered and used the <dermatalogica.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.
DERMALOGICA products are researched and developed by The International
Dermal Institute, Inc. The
International Dermal Institute, Inc., has licensed its DERMALOGICA mark to
Dermalogica, Inc. These two entities
will be referred to collectively as “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 holds a trademark registration with the United States Patent
and Trademark Office for the DERMALOGICA mark (Reg. No. 1,539,948 issued May
23, 1989).
Respondent
registered the <dermatalogica.com> domain name on November 17,
2002. Respondent is using the disputed
domain name to redirect Internet users to its search engine website featuring
links to products in direct competition with Complainant’s business.
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. The Panel is
entitled to accept all reasonable allegations and inferences set forth in the
Complaint as true unless the evidence is clearly contradictory. See
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that the respondent's failure to respond
allows all reasonable inferences of fact in the allegations of the complaint to
be deemed true); see also 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.").
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 in this proceeding that it holds rights in the DERMALOGICA mark
through registration with the USPTO and continuous use of the mark in
commerce. See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the USPTO creates a presumption of rights in a
mark); see also Innomed Tech., Inc. v. DRP Servs., FA
221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
The Panel finds that Respondent’s <dermatalogica.com> domain name is confusingly similar to
Complainant’s DERMALOGICA mark because the domain name contains Complainant’s
mark in its entirety and merely adds the letters “ta” and the generic top-level
domain “.com” to the mark. The addition
of extra letters and a generic top-level domain to Complainant’s registered
mark does not counteract
the confusingly similar aspects of Respondent’s domain name pursuant to Policy
¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, a respondent does not create a distinct mark but nevertheless
renders the domain name confusingly similar to the complainant’s marks); see
also Am.Online, Inc. v. Avrasya
Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000)
(finding that the respondent’s domain name, <americanonline.com>, is
confusingly similar to the complainant’s famous AMERICA ONLINE 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 or confusingly similar); see also Interstellar Starship Services Ltd. v.
EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (<epix.com> "is
the same mark" as EPIX).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent does not have rights or legitimate interests in the <dermatalogica.com>
domain name. When Complainant makes a prima
facie case in support of its assertions, the burden shifts to Respondent to
show that it does have rights or legitimate interests in the domain name. Due to Respondent’s failure to respond to
the Complaint, the Panel assumes that Respondent does not have rights or
legitimate interests in the <dermatalogica.com> domain name. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the complainant has
asserted that the respondent does not have rights or legitimate interests with
respect to the domain name it is incumbent on the 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 the complainant that the respondent
does not have rights or legitimate interests is sufficient to shift the burden
of proof to the respondent to demonstrate that such a right or legitimate
interest does exist); see also Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a response, the respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Respondent is
using the <dermatalogica.com> domain name to redirect Internet
users to its search engine website featuring links to products in direct
competition with Complainant’s business.
Respondent’s use of a domain name confusingly similar to Complainant’s
DERMALOGICA mark to redirect Internet users interested in Complainant’s
products to its commercial website featuring products in direct competition
with Complainant’s products is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s
appropriation of the complainant’s mark to market products that compete with
the complainant’s goods does not constitute a bona fide offering of goods and
services); see also Clear Channel Communications, Inc. v. Beaty Enters.,
FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a
competitor of the complainant, had no rights or legitimate interests in a
domain name that utilized the complainant’s mark for its competing website); see
also Chip Merch., Inc. v. Blue Star
Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain
names were confusingly similar to the complainant’s mark and that the
respondent’s use of the domain names to sell competing goods was illegitimate
and not a bona fide offering of goods).
Respondent
has offered no evidence, and nothing in the record suggests, that respondent is
commonly known by the <dermatalogica.com> domain name. Moreover,
Complainant has not authorized or licensed Respondent to use its DERMALOGICA
mark in any way. Thus, Respondent has
not established rights or legitimate interests in the <dermatalogica.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also 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 Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the 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 interest 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.
Respondent is
using the <dermatalogica.com> domain name, which is confusingly
similar to Complainant’s DERMALOGICA mark, to redirect Internet users to its
search engine website featuring links to products in direct competition with
Complainant’s business. The Panel finds
that such use constitutes disruption and is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii).
See Puckett v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent had diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business).
Respondent
registered the <dermatalogica.com> domain name with actual or
constructive knowledge of Complainant’s rights in the DERMALOGICA mark due to
Complainant’s registration of the mark with the USPTO. Moreover, the Panel infers that Respondent
registered the domain name with actual knowledge of Complainant’s rights in the
mark due to the obvious connection between the content advertised on Respondent’s
website and Complainant’s business.
Registration of a domain name that is confusingly similar to another’s
mark despite actual or constructive knowledge of the mark holder’s rights in
the mark 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 the respondent
reasonably should have been aware of the 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.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002)
(finding that because the link between the complainant’s mark and the content
advertised on the respondent’s website was obvious, the respondent “must have
known about the complainant’s mark when it registered the subject domain
name”).
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 <dermatalogica.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
July 6, 2005
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