Lifetouch, Inc. v. Lifetouch Technology
Claim
Number: FA0509000555538
Complainant is
Lifetouch, Inc. (“Complainant”), represented by Jodi A. DeSchane
of Faegre & Benson LLP, 2200 Wells Fargo Center, 90 South Seventh
Street, Minneapolis, MN, 55402. Respondent
is Lifetouch Technology (“Respondent”), 410 E. 14th Street,
Apt. 104, Sanford, FL, 32771.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <lifetouchtech.com>, registered with Network
Solutions, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically September 8, 2005; the Forum received a hard copy of the
Complaint September 12, 2005.
On
September 9, 2005, Network Solutions, Inc. confirmed by e-mail to the Forum
that the domain name <lifetouchtech.com> is registered with Network
Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that
Respondent is bound by the Network Solutions, Inc. registration agreement and
thereby has agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
September 12, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 3, 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@lifetouchtech.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 Forum transmitted
to the parties a Notification of Respondent Default.
On
October 10, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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 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. The domain name that Respondent
registered, <lifetouchtech.com>, is confusingly similar to
Complainant’s LIFETOUCH mark.
2. Respondent has no rights to or legitimate
interests in the <lifetouchtech.com> domain name.
3. Respondent registered and used the <lifetouchtech.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Lifetouch,
Inc., provides professional portraits and other photography services for
preschools and schools, houses of worship and the retail market. Complainant was founded in 1936 as National
School Studios and became the largest school photography firm in the United
States. Complainant changed its name to
Lifetouch, Inc. in 1984.
Complainant
holds numerous registrations throughout the world and with the United States
Patent and Trademark Office (“USPTO”) for the LIFETOUCH mark (Reg. No.
1,323,226 issued March 5, 1985) and related marks.
Complainant
operates approximaely 570 portrait studios and they are located in all fifty
United States and Canada. Complainant
has operated a website at the <lifetouch.com> domain name since 1995.
Respondent
registered the <lifetouchtech.com> domain name March 10,
2003. Respondent is using the disputed
domain name to operate a website selling ink and toner for equipment that
reproduces images.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established with extrinsic proof in this proceeding that it has rights in the
LIFETOUCH mark based on its registration of the mark with the USPTO and
numerous other trademark authorities worldwide. The Policy provides that a complainant’s registration of a mark
with a federal authority establishes a prima facie case of the
complainant’s rights in the mark. See 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.”); see also 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.”).
The <lifetouchtech.com> domain name incorporates Complainant’s
registered LIFETOUCH mark in its entirety and adds the term “tech,” which is an
abbreviation for “technology.”
Respondent’s attempt to distinguish the domain name by adding a common
term to Complainant’s mark is insufficient to create a distinguishable domain
name. The Panel finds that the disputed
domain name is confusingly similar to Complainant’s mark under Policy ¶
4(a)(i). See Magnum Piering,
Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the
generic term “INC” does not change the confusing similarity); 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).
Accordingly, the
Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant met
its initial burden of showing that it has rights to or legitimate interests in
the mark contained within the confusingly similar disputed domain name. Complainant also alleged that Respondent
lacks such 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 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
asserts that Respondent is not commonly known by the <lifetouchtech.com>
domain name and that Respondent has never been licensed by Complainant to use
to use any version of Complainant’s LIFETOUCH mark for any purpose. Furthermore, Complainant contends that,
while the WHOIS information lists Respondent as “lifetouch technology,” no
record shows any such business with the Florida Secretary of State. Respondent failed to provide any evidence in
this regard or to respond at all, which entitles the Panel to construe any
evidence in favor of Complainant.
Therefore, the
Panel finds that Respondent has not established rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Brown v. Sarrault, FA
99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com>
domain name because it was doing business as “Mobility Connections”); 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 Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the panel to draw adverse inferences from the respondent’s
failure to reply to the complaint).
Complainant also
provided evidence that the <lifetouchtech.com> domain name resolves
to a website that offers ink and toner for equipment that reproduces
images. According to the evidence, it
appears that Respondent is using the domain name to attract Internet traffic to
Respondent’s commercial website. The
Panel finds that such use of a domain, name incorporating Complainant’s entire
LIFETOUCH mark, is not in connection with a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong,
D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the
complainant’s entire mark in domain names makes it difficult to infer a
legitimate use); see also 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).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent is
using the <lifetouchtech.com> domain name to attract Internet
users searching for Complainant’s products and services to Respondent’s
commercial website. The use of Complainant’s
well-known LIFETOUCH mark in the disputed domain name creates a likelihood of
confusion as to Complainant’s affiliation with the resulting website. The Panel concludes that these circumstances
indicate that Respondent is attempting to capitalize on the goodwill associated
with Complainant’s mark and that this is evidence of bad faith registration and
use under 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 State Fair of
Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding
bad faith where the respondent registered the domain name <bigtex.net> to
infringe on the complainant’s goodwill and attract Internet users to the
respondent’s website).
As a result of
Complainant’s registration of its LIFETOUCH mark with the USPTO in 1985,
Respondent had constructive notice of Complainant’s rights in the mark at the
time Respondent registered the <lifetouchtech.com> domain name in
2003. In addition to constructive
knowledge, Respondent’s use of Complainant’s entire mark in the domain name,
coupled with the fame of Complainant’s mark, suggests that Respondent had
actual knowledge of Complainant’s rights at the time of registration. Registering a domain name that includes
another’s mark with knowledge of the other party’s rights in the mark is
evidence of bad faith registration and use under 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 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
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 satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <lifetouchtech.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 21, 2005.
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