Ms. Laura Mercier and Gurwitch Products, L.L.C. v. Unasi Inc.
Claim Number: FA0511000590700
Complainants are Ms. Laura Mercier and Gurwitch Products, L.L.C. (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”), Galerias 3, Zona 5, Panama 5235, Panama.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <laramercier.com>, registered with Domaindoorman, Llc.
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 November 1, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 1, 2005.
On November 4, 2005, Domaindoorman, Llc confirmed by e-mail to the National Arbitration Forum that the <laramercier.com> domain name is registered with Domaindoorman, Llc and that Respondent is the current registrant of the name. Domaindoorman, Llc has verified that Respondent is bound by the Domaindoorman, Llc 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 November 4, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 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@laramercier.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 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 <laramercier.com> domain name is confusingly similar to Complainant’s LAURA MERCIER mark.
2. Respondent does not have any rights or legitimate interests in the <laramercier.com> domain name.
3. Respondent registered and used the <laramercier.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant produces and markets high-end cosmetics, skincare, bath and body products and instructional videos. Complainant has used its LAURA MERCIER mark continuously and extensively in association with its business since at least as early as 1996.
Complainant, Ms. Laura Mercier, owns numerous registrations for the LAURA MERCIER mark with trademark authorities in several countries, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,350,939 issued May 16, 2000 and Reg. No. 2,446,387 issued April 24, 2001). Complainant, Gurwitch Products, L.L.C., licenses the LAURA MERCIER mark.
Respondent registered the <laramercier.com> domain name on October 21, 2005. The disputed domain name resolves to a directory and search engine website that displays links to websites proving products and services in competition with Complainant.
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
LAURA MERCIER mark with the USPTO, which the Panel determines to be sufficient
to establish Complainant’s rights in the mark for purposes of Policy ¶
4(a)(i). See 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”); 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 <laramercier.com>
domain name registered by Respondent differs from Complainant’s LAURA MERCIER
mark merely with the omission of the letter “u.” Simply omitting a letter to create a domain name that is
phonetically similar to Complainant’s mark constitutes typosquatting and is not
enough to distinguish the domain name from the mark. See Neiman Marcus Group, Inc.
v. Party Night, Inc., FA 114546 (Nat. Arb.
Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN
MARCUS mark and was a classic example of
typosquatting, which was evidence that the domain name was confusingly
similar to the mark); see also Guinness UDV
N. Am., Inc. v. Dallas Internet Servs.,
D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name
confusingly similar to the complainant’s SMIRNOFF mark because merely removing
the letter “f” from the mark was insignificant).
Consequently, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); 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”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant contends that Respondent is using the <laramercier.com>
domain name to operate a generic search engine website that prominently
displays links to websites offering competing cosmetics and skin care
products. Respondent’s use of
Complainant’s LAURA MERCIER mark to attract Internet users to Respondent’s
website, presumably for the purpose of earning referral fees for diverted
traffic to Complainant’s competitors, is not a use in connection with a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See DLJ
Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Or. State Bar v. A Special
Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's
advertising of legal services and sale of law-related books under Complainant's
name is not a bona fide offering of goods and services because Respondent is
using a mark confusingly similar to the Complainant's to sell competing
goods.”); see also Coryn Group, Inc. v. Media Insight, FA 198959
(Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the
domain names for a bona fide offering of goods or services nor a
legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks).
Furthermore, Complainant asserts that Respondent is not commonly known by the <laramercier.com> domain name nor authorized or licensed to use Complainant’s LAURA MERCIER mark for any purpose. The Panel finds nothing in the record to contradict Complainant’s assertions. Thus, 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 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 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).
Accordingly, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <laramercier.com> domain name to operate a commercial website that links Internet users to some of Complainant’s competitors in the cosmetics and skin care business. Furthermore, Respondent likely profits through referral fees for diverting Internet users to competitors’ websites. Respondent’s use of Complainant’s registered LAURA MERCIER mark to attract Complainant’s customers to Complainant’s competitors via Respondent’s directory website for Respondent’s financial gain is evidence that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The <laramercier.com> domain name registered by Respondent consists of a version of Complainant’s LAURA MERCIER mark that omits the letter “u.” Thus, Respondent is engaging in the practice of “typosquatting” by taking advantage of potential typographical errors made by Internauts intending to reach a website corresponding to Complainant’s LAURA MERCIER mark. Under the Policy, typosquatting is sufficient evidence of bad faith registration and use of the disputed domain name. The Panel, therefore, finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting’”); see also 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.”).
Thus, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <laramercier.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 13, 2005
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