Dermalogica, Inc. and The International Dermal Institute, Inc. v. Aviram Gerassi
Claim Number: FA0601000624530
Complainants are Dermalogica, Inc. and The International Dermal Institute, Inc. (collectively “Complainant”), represented by David J. Steele of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000, Newport Beach, CA 92660. Respondent is Aviram Gerassi (“Respondent”), PO Box 22144, San Diego, CA 92192.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dermilogical.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 11, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 11, 2006.
On January 11, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <dermilogical.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 January 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 1, 2006 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@dermilogical.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <dermilogical.com> domain name is confusingly similar to Complainant’s DERMALOGICA mark.
2. Respondent does not have any rights or legitimate interests in the <dermilogical.com> domain name.
3. Respondent registered and used the <dermilogical.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The International Dermal Institute, Inc., owns
the DERMALOGICA mark and licenses the mark to Complainant, Dermalogica, Inc. Complainant has used the mark throughout the
United States and the world since at least 1986 in connection with a variety of
skin care products.
Complainant owns numerous trademark registrations throughout the world for the DERMALOGICA mark, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,539,948 issued May 5, 1987).
Respondent registered the <dermilogical.com> domain name on February 18, 2001. The domain name resolves to a directory website that displays links to competing beauty products.
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. 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 registered its DERMALOGICA mark with the USPTO and has provided evidence of its registration, which predates Respondent’s registration of the domain name. The Panel finds that this satisfies the requirement of establishing Complainant’s rights 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.”).
The <dermilogical.com> domain name differs from Complainant’s DERMALOGICA mark by replacing the “a” with an “i” and by adding an “l” to the end. These spelling changes are not sufficient to distinguish the domain name from the mark. Furthermore, the use of the generic top-level domain “.com” is irrelevant to the Panel’s similarity analysis. Thus, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
The initial burden under Policy ¶4(a)(ii) is on Complainant to prove 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). 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). The Panel finds 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 asserts that Respondent is not commonly known by the <dermilogical.com> domain name or any variation thereof, and the WHOIS information does not suggest otherwise. Furthermore, Respondent is not affiliated with Complainant in any way. Without any response from Respondent to rebut Complainant’s assertions, the Panel concludes that Respondent has not established rights or legitimate interests under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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").
The <dermilogical.com> domain name is being used in association with a directory website that displays links to products and services that compete with those of Complainant. The Panel infers that Respondent receives click-through fees for diverting Internet users to these websites via the disputed domain name. Such use of a confusingly similar version of Complainant’s DERMALOGICA mark 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 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 WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
By using a confusingly similar version of Complainant’s DERMALOGICA mark to operate a directory website through which Respondent likely derives profit, Respondent is attempting to benefit from the goodwill associated with Complainant’s mark. Internet users searching for Complainant’s products and services under the DERMALOGICA mark may become confused upon reaching Respondent’s website with links to similar products and services. Respondent’s registration and use of the <dermilogical.com> domain name for this purpose is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Complainant has satisfied the requirements of 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 <dermilogical.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 22, 2006
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