AHAVA NA, LLC v. Yoav Cohen
Claim
Number: FA0507000509103
Complainant is AHAVA NA, LLC (“Complainant”), represented
by Sidney D. Bluming, of Bluming Freiman Franco LLP,
140 East 45th Street-19th Floor, New York, NY 10017. Respondent is Yoav Cohen (“Respondent”),
Tel Aviv 12345.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <ahavashop.com>, registered with Go
Daddy Software, Inc.
The
undersigned certifies that he or has acted independently and impartially and to
the best of his or 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 July
5, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 8, 2005.
On
July 6, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <ahavashop.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
July 12, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 1, 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@ahavashop.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
August 8, 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 <ahavashop.com>
domain name is confusingly similar to Complainant’s AHAVA mark.
2. Respondent does not have any rights or
legitimate interests in the <ahavashop.com> domain name.
3. Respondent registered and used the <ahavashop.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 luxury beauty products bearing
the AHAVA brand name in the United States.
In association with these products, Dead Sea Laboratories, Inc., the
developer and producer of the AHAVA products, has registered the AVAHA mark
(Reg. No. 1,790,035 issued August 31, 1993) with the United States Patent and
Trademark Office (“USPTO”). Under the
exclusive distribution agreement with Dead Sea Laboratories, Inc., Complainant
has the right to take action against those infringing upon the AHAVA mark.
Respondent
registered the <ahavashop.com> domain name on July 31, 2002. Respondent’s domain name resolves to a
website that prominently features the AHAVA trademark and allows Internet users
to purchase AHAVA products directly from Respondent.
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,
through its licensing agreement with Dead Sea Laboratories, Inc., has
established rights in the AHAVA mark through registration of the mark through
the USPTO pursuant to Policy ¶ 4(a)(i).
See Innomed Techs., 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.”); see also 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 [or] have acquired secondary
meaning”).
Complainant
asserts that Respondent’s <ahavashop.com> domain name is
confusingly similar to the AHAVA mark.
Respondent’s domain name features the entire AHAVA mark and adds the
generic term “shop.” Panels have held
that the addition of generic terms is insufficient to distinguish domain names
from established marks. As a result,
the Panel finds that the <ahavashop.com> domain name is
confusingly similar to Complainant’s AHAVA mark pursuant to Policy ¶
4(a)(i). See 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 Am. Online, Inc. v.
Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003)
(finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the
descriptive terms “traffic school,” “defensive driving,” and “driver
improvement” did not add any distinctive features capable of overcoming a claim
of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
further asserts that Respondent lacks rights and legitimate interests in the <ahavashop.com>
domain name. Complainant’s submission
creates a prima facie case which Respondent has the burden of
refuting. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s
Submission constitutes a prima facie case under the Policy, the burden
effectively shifts to Respondent. Respondent’s failure to respond means that
Respondent has not presented any circumstances that would promote its rights or
legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see
also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(once the complainant asserts that the respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to the respondent to
provide “concrete evidence that it has rights to or legitimate interests in the
domain name at issue”). Because
Respondent has failed to set forth evidence to suggest otherwise, the Panel
finds that no rights or legitimate interests exist pursuant to Policy ¶
4(a)(ii). See Vanguard Group, Inc.
v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because
Respondent failed to submit a Response, “Complainant’s submission has gone
unopposed and its arguments undisputed.
In the absence of a Response, the Panel accepts as true all reasonable
allegations . . . unless clearly contradicted by the evidence.”); 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).
Respondent’s
disputed domain name resolves to a website that prominently displays the AHAVA
mark and allows Internet users to purchase various AHAVA products. Such unauthorized use of the trademark is
neither a bona fide offering of goods or services under Policy ¶ 4(c)(i)
nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert
Internet users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also G.D. Searle & Co. v.
Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s
use of the disputed domain name to solicit pharmaceutical orders without a
license or authorization from the complainant does not constitute a bona
fide offering of goods or services under Policy ¶ 4(c)(i)).
Furthermore,
nothing in the record indicates that Respondent is commonly known by the
disputed domain name or authorized to register domain names bearing
Complainant’s trademark. The Panel
finds that Respondent lacks rights and legitimate interests 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 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); see
also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <ahavashop.com>
domain name resolves to a website that features the AHAVA mark and offers
various products associated with that trademark. Such unauthorized sale of Complainant’s products constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See Lambros v.
Brown, FA 198963 (Nat. Arb. Forum Nov. 19,
2003) (finding that the respondent registered a domain name primarily to
disrupt its competitor when it sold similar goods as those offered by the
complainant and “even included Complainant's personal name on the website,
leaving Internet users with the assumption that it was Complainant's business
they were doing business with”); 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).
Furthermore,
because Respondent is using a confusingly similar domain name, Internet users
may become confused as to Complainant’s affiliation with or sponsorship of the
commercial services on the resulting website.
Such diversionary use is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8,
2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and
use of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using the complainant’s famous marks and
likeness); see also Fossil Inc. v.
NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent
acted in bad faith by registering the <fossilwatch.com> domain name and
using it to sell various watch brands where the respondent was not authorized
to sell the complainant’s goods).
Finally,
Respondent registered the <ahavashop.com> domain name with
constructive or actual knowledge of Complainant’s rights in the AHAVA
mark. Federal trademark registration
with the USPTO confers constructive knowledge of Complainant’s rights in the
AHAVA mark onto Respondent. See
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“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 Victoria’s
Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal
Register registration [of a trademark or service mark] is constructive notice
of a claim of ownership so as to eliminate any defense of good faith adoption”
pursuant to 15 U.S.C. § 1072).
Furthermore, due to Respondent’s inclusion of Complainant’s mark on the
resulting website, the Panel infers that Respondent had actual knowledge of
Complainant’s rights. Registration of a
confusingly similar domain name featuring another’s mark despite constructive
or actual knowledge of the mark holder’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) (holding that “there is a legal presumption of bad
faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively”); 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 <ahavashop.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
August 22, 2005
.
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