Ms. Laura Mercier and Gurwitch Products, L.L.C. v. Spiral Matrix
Claim Number: FA0601000635488
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 Spiral Matrix (“Respondent”), 1st Floor Muya House, Kenyatta Ave., P.O. Box 4276-30100, Eldoret, KE 30100.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lauriemercier.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 25, 2006.
On January 25, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <lauriemercier.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 25, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 14, 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@lauriemercier.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 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole 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:
Complainant holds registrations in the LAURA MERCIER trademark, issued May 16, 2000, with the United States Patent and Trademark Office (“USPTO”) and licenses those rights exclusively to Complainant, Gurwitch Products, L.L.C.
Complainant uses the LAURA MERCIER mark in connection with the production and marketing of high-end cosmetics, skincare products, bath and body collections, and instructional videos.
Respondent registered the <lauriemercier.com> domain name on November 22, 2005.
Respondent is not authorized by Complainant to use its mark in a domain name.
Respondent’s domain name resolves to a website featuring links to various websites, some of which offer products that compete with those of Complainant.
Because of the confusing similarity between its mark and Respondent’s domain name, together with the content on Respondent’s website, Internet users are likely to be confused as to Complainant’s sponsorship of and affiliation with Respondent’s website.
Respondent’s <lauriemercier.com> domain name is confusingly similar to Complainant’s LAURA MERCIER mark.
Respondent does not have any rights or legitimate interests in the <lauriemercier.com> domain name.
Respondent registered and uses the <lauriemercier.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark 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 was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the LAURA MERCIER mark
through registration with the United States Patent and Trademark Office. 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.”).
Complainant contends that Respondent’s <lauriemercier.com> domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name contains the dominant features of Complainant’s LAURA MERCIER mark and substitutes the letters “i” and “e” for the letter “a,” creating a common variation of the name “Laura.” The Panel finds that the addition or deletion of letters from an otherwise identical mark fails sufficiently to distinguish Respondent’s disputed domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to the complainant’s mark BEANIE BABIES); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to the complainant’s HEWLETT-PACKARD mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <lauriemercier.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because of Respondent’s failure to respond to the Complaint, there arises a presumption that Respondent lacks rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where a complainant has asserted that a respondent does not have rights or legitimate interests with respect to a domain name, it is incumbent upon that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Complainant further contends that Respondent is using the
disputed domain name to operate a website featuring links to various other
commercial websites, some of which compete with Complainant, and from which
websites Respondent presumably receives referral fees. In the absence of evidence to the contrary,
the Panel finds that such diversionary use on Internet traffic for Respondent’s
own commercial gain is neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use
pursuant to 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 a
respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to a complainant’s mark, websites
where that 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).
Furthermore, Complainant contends, without contradiction from Respondent, that Respondent is neither commonly known by the <lauriemercier.com> domain name nor authorized to use domain names featuring Complainant’s mark. The Panel therefore finds that Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) that complainant’s prior rights in the domain name precede that respondent’s domain name registration; (3) that respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark and never applied for a license or permission from a complainant to use the trademarked name).
For these reasons, the Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Under this head, the Panel finds that Respondent’s use of
the <lauriemercier.com> domain name to resolve to a website
featuring links to various competing commercial websites as a means for
commercial gain is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that a respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because that respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); 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.’”
Moreover, Complainant contends that, due to the confusing similarity between its mark and Respondent’s domain name, together with the content of Respondent’s website, Internet users are likely to be confused as to Complainant’s sponsorship of and affiliation with the resulting website. Respondent does not deny this prospect. The Panel therefore finds such use of the disputed domain name to be further 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 Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where a respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Additionally, it is evident that Respondent registered the
contested domain name with either actual or constructive knowledge of
Complainant’s rights in the LAURA MERCIER mark by virtue of Complainant’s prior
registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly
similar domain name despite such actual or constructive knowledge evidences bad
faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see
also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
Thus the Panel finds that Policy ¶ 4(a)(iii) has been
satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lauriemercier.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 27, 2006
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