Helen of Troy Limited v. Admin Manager
Claim
Number: FA0507000525170
Complainant is Helen of Troy Limited (“Complainant”), represented
by R. Wayne Pritchard of Ray, Valdez, McChristian & Jeans, P.C., 5822 Cromo, El Paso, TX 79912.
Respondent is Admin Manager (“Respondent”),
P.O. Box 2014, El Segundo, CA 90245-114, US.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <epil-stop.com>, registered with Enom,
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
27, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 27, 2005.
On
July 27, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the <epil-stop.com> domain name is registered with Enom, Inc.
and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, 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
August 4, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 24, 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@epil-stop.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 30, 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 <epil-stop.com>
domain name is identical to Complainant’s EPIL-STOP mark.
2. Respondent does not have any rights or
legitimate interests in the <epil-stop.com> domain name.
3. Respondent registered and used the <epil-stop.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Helen of Troy Limited, is in the business of
providing hair removal products to the public, including depilatory lotions,
creams, sprays, wipes and other similar skin care products. Complainant holds numerous registrations with
the United States Patent and Trademark Office (“USPTO”) that incorporate the
EPIL-STOP mark, including the registration for the EPIL-STOP mark itself (Reg.
No. 2,162,229 issued June 2, 1998).
Respondent registered the <epil-stop.com> domain name on November 9, 1999. The disputed domain name resolves to a
website that displays numerous links to third-party businesses that offer both
Complainant’s products and the products of Complainant’s competitors. Presumably, Respondent earns referral fees
for diverting Internet users to various businesses via the links on
Respondent’s website.
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
provided evidence of its registration of the EPIL-STOP mark with the USPTO. Complainant’s registration of its mark with
a federal authority is sufficient to establish a prima facie case of
Complainant’s rights in the mark for purposes of 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 Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
Numerous panels
have held under the Policy that the addition of a generic top-level domain
(“gTLD”) to a complainant’s mark is irrelevant and renders the disputed domain
name identical to the mark. In the
instant case, the <epil-stop.com> domain name includes
Complainant’s EPIL-STOP mark in its entirety, adding only the gTLD “.com.” Thus, the Panel finds that the disputed
domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness
Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the
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"); see also Isleworth Land
Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002)
(finding it is a “well established principle that generic top-level domains are
irrelevant when conducting a Policy ¶ 4(a)(i) analysis”).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Panels have
consistently held under the Policy that the complainant has the initial burden
of proving that the respondent lacks rights and legitimate interests in the disputed
domain name. In Compagnie Generale
des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14,
2001), the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the
complainant has asserted that the respondent has no 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”). Having found that
Complainant has met its initial burden by establishing a prima facie
case, the Panel will now analyze whether Respondent has met its burden to
establish rights or legitimate interests in the disputed domain name under
Policy ¶ 4(c).
Complainant
alleges that there is no evidence that Respondent has been commonly known by
the <epil-stop.com> domain name.
According to the WHOIS information for the disputed domain name,
Respondent is identified as “Admin Manager” and no affiliation with the
disputed domain name is indicated.
Since the Panel has not received a response from Respondent, there is no
evidence before the Panel to challenge Complainant’s assertions that Respondent
is not commonly known by the disputed domain name. The Panel finds that Respondent has not established rights or
legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See 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.”); see
also Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”); 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").
Respondent is
using the <epil-stop.com> domain name, which includes Respondent’s
EPIL-STOP mark in its entirety, to intercept Internet traffic likely intended
for Complainant and divert it to Respondent’s website that displays links to
third-party businesses offering Complainant’s products and other hair removal
products in direct competition with Complainant. Respondent’s use of Complainant’s mark to divert Internet users
through Respondent’s website, presumably to benefit from referral fees, is not
in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See U.S. Franchise
Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the
complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the
respondent’s website, which is blank but for links to other websites, is not a
legitimate use of the domain names); see also Nike, Inc. v. Dias,
FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering
of goods or services where the respondent used the complainant’s mark without
authorization to attract Internet users to its website, which offered both the
complainant’s products and those of the complainant’s competitors). Furthermore, in
failing to submit a response to Complainant’s contentions, Respondent has
neglected to provide any evidence that would challenge Complainant’s prima
facie case. The Panel, therefore,
finds that Respondent has not established rights or legitimate interests in the
disputed domain name under Policy ¶ 4(c)(i) or (iii). See Broadcom Corp. v. Ibecom PLC, FA 361190
(Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the
Complaint functions as an implicit admission that [Respondent] lacks rights and
legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set
forth…as true.”).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The <epil-stop.com>
domain name resolves to a website that features a directory of links to various
products and services similar to those of Complainant. The Panel presumes that Respondent receives
commissions for diverting Internet users to third-party websites via the links
located at Respondent’s website.
Additionally, Respondent’s use of Complainant’s EPIL-STOP mark in the domain
name creates a likelihood of confusion and suggests an attempt to attract
Internet users to Respondent’s website for Respondent’s commercial gain. The Panel finds that this is evidence of
Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am.
Univ. v. Cook, FA 208629 (Nat. Arb. Forum
Dec. 22, 2003) (“Registration and use of a domain name that incorporates
another's mark with the intent to deceive Internet users in regard to the
source or affiliation of the domain name is evidence of bad faith.”); see
also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat.
Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors
and Respondent presumably commercially benefited from the misleading domain
name by receiving ‘click-through-fees.’”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying
the complainant’s mark on its website and offering identical services as those
offered by the complainant).
Respondent’s
registration of the <epil-stop.com> domain name, which is
identical to Complainant’s EPIL-STOP mark, suggests that Respondent knew of
Complainant’s rights in the mark when Respondent registered the domain
name. The similarity between
Complainant’s business and the content displayed on Respondent’s website is
further evidence that Respondent had knowledge of Complainant’s rights in the
EPIL-STOP mark. Additionally,
Complainant’s registration of its mark with the USPTO and other federal
authorities bestows upon Respondent constructive knowledge of Complainant’s
rights in the mark. Respondent’s
registration of a domain name that contains Complainant’s mark, with knowledge
of Complainant’s rights in the mark, is evidence of bad faith registration and
use pursuant to Policy ¶ 4(a)(iii). See
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); 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”); see also 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.”).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(iii).
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 <epil-stop.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
Sept. 9, 2005
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