Klein-Becker IP Holdings LLC v. Dan Grigor
Claim Number: FA0509000566965
Complainant is Klein-Becker IP Holdings LLC (“Complainant”), represented by Joel B. Rothman, of Rutherford Mulhall P.A., 2600 North Military Trail Fourth Floor, Boca Raton, 33431, FL. Respondent is Dan Grigor (“Respondent”), 17300 Grand Ave, Lake Elsinore, CA 92530.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <wwwstrivectin.com> and <wwwstrivectin-sd.com>, registered with eNom.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 23, 2005.
On September 22, 2005, eNom confirmed by e-mail to the National Arbitration Forum that the <wwwstrivectin.com> and <wwwstrivectin-sd.com> domain names are registered with eNom and that Respondent is the current registrant of the names. eNom has verified that Respondent is bound by the eNom 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 September 26, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 17, 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@wwwstrivectin.com and postmaster@wwwstrivectin-sd.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 21, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <wwwstrivectin.com> and <wwwstrivectin-sd.com> domain names are confusingly similar to Complainant’s STRIVECTIN-SD marks.
2. Respondent does not have any rights or legitimate interests in the <wwwstrivectin.com> and <wwwstrivectin-sd.com> domain names.
3. Respondent registered and used the <wwwstrivectin.com> and <wwwstrivectin-sd.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Klein-Becker IP Holdings LLC, is a licensor of the STRIVECTIN-SD trademarks (Reg. No. 2,760,414 issued September 2, 2003, filed June 27, 2002). Complainant licenses this mark to Klien-Becker USA, LLC for the manufacture, distribution, and sale of various “cosmeceutical” products. Complainant has registered the STRIVECTIN-SD mark with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <wwwstrivectin.com> and <wwwstrivectin-sd.com> domain names on April 21, 2003 and June 23, 2003, respectively. Both of Respondent’s domain names resolve to the same website, which offers Complainant’s STRI-VECTIN SD brand skin product for sale.
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 rights in the STRIVECTIN-SD mark
through registration with the USPTO. 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 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”).
Although Complainant’s trademark was not issued until September 2, 2003,
the effective date of registration dates back to the application’s filing date,
June 27, 2002. See Planetary Soc’y
v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective
date of Complainant’s trademark rights date back to the application’s filing
date); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar.
30, 2001) (“The effective date of Complainant's federal rights is . . . the
filing date of its issued registration.”).
Complainant asserts that Respondent’s <wwwstrivectin.com> and <wwwstrivectin-sd.com> domain names are confusingly similar to Complainant’s STRIVECTIN-SD mark. Respondent’s <wwwstrivectin.com> domain name omits the letters “sd” from Complainant’s mark while adding the letters “www” to the beginning of the mark. Similarly, Respondent’s <wwwstrivectin-sd.com> domain name features Complainant’s entire mark and adds the letters “www” to the beginning of the mark. The Panel finds that neither the letters “www” nor the omission of the letters “sd” is significant enough to distinguish the disputed domain names from Complainant’s STRIVECTIN-SD mark pursuant to Policy ¶ 4(a)(ii). See Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS mark); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain names. Complainant’s assertion creates a prima facie case under Policy ¶ 4(a)(ii) and, thus, shifts the burden of proof onto Respondent. 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 failed to respond, the Panel infers that no rights or legitimate interests exist 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, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent is using the <wwwstrivectin.com> and <wwwstrivectin-sd.com> domain names, which are confusingly similar to Complainant’s mark, to operate a website that offers the unauthorized sale of Complainant’s products. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
Furthermore, no affirmative evidence has been set forth showing that Respondent is either commonly known by the <wwwstrivectin.com> and <wwwstrivectin-sd.com> domain names or authorized to register domain names featuring Complainant’s mark. The Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <wwwstrivectin.com> and <wwwstrivectin-sd.com> domain names for the unauthorized sale of Complainant’s products. The Panel finds that such use disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also 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).”).
Respondent has registered two domain names that are
“typosquatted” versions of Complainant’s mark.
Typosquatting is the practice of creating domain name registrations that
are misspelled or typographic mistakes of another’s domain name. Registrants register these types of domain
names to attract traffic, relying on the Internet user’s typing mistake when
entering the domain name in the URL.
Many Panels have held that this is inherently parasitic and indicative
of bad faith registration and use Pursuant to Policy ¶ 4(a)(iii); this Panel
holds that Respondent is typosquatting, which is, similarily, evidence of bad
faith. See Nat’l Ass’n of Prof’l
Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting … is the intentional misspelling of words with [the] intent to
intercept and siphon off traffic from its intended destination, by preying on
Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith.”); see also RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb.
Forum Feb. 25, 2003) (inferring that the respondent’s registration of the
<wwwremax.com> domain name, incorporating the complainant’s entire mark,
was done with actual notice of the complainant’s rights in the mark prior to
registering the infringing domain name, evidencing bad faith).
Furthermore, due to the nature of Respondent’s use of the disputed domain names, Internet users are likely to become confused as to Complainant’s sponsorship of and affiliation with the resulting website. The Panel finds that such use for Respondent’s own commercial gain amounts to bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent’s use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent’ bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv).”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
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 <wwwstrivectin.com> and <wwwstrivectin-sd.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 2, 2005
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