Dermaide Research Corp. v. Melanie Summers
Claim Number: FA0602000649697
Complainant is Dermaide Research Corp. (“Complainant”), represented by Boris Umansky, of Davis McGrath LLC, 125 S. Wacker Drive, Suite 1700, Chicago, IL 60606. Respondent is Melanie Summers (“Respondent”), 1413 Avon Lane #119, Pompano Beach, FL 33068.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dermaide.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 24, 2006.
On February 23, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <dermaide.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 February 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 20, 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@dermaide.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 23, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <dermaide.com> domain name is identical to Complainant’s DERMAIDE mark.
2. Respondent does not have any rights or legitimate interests in the <dermaide.com> domain name.
3. Respondent registered and used the <dermaide.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dermaide Research Corp., has continuously used the DERMAIDE mark in connection with its Dermaide product, a skin moisturizing lotion, since August 16, 1978. Complainant has also registered the DERMAIDE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,152,071 issued April 28, 1981). Complainant registered the <dermaide.com> domain name at least as early as 2001, but allowed the registration to lapse.
Respondent registered the <dermaide.com> domain name on March 22, 2005. Internet users who access this domain name are directed to a website promoting a company identified as “DermaSystems, LLC” and its Injection Site Solution product, which is similar to Complainant’s Dermaide product.
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, by registering the DERMAIDE mark with the
USPTO, has established rights in this mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive."); see also 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.”).
Respondent’s <dermaide.com> domain name is
identical to Complainant’s DERMAIDE mark, in that it wholly incorporates the
mark with the addition of the top-level domain “.com.” The addition of a top-level domain to
Complainant’s mark does not distinguish the disputed domain name from the
mark. Therefore, Respondent’s domain
name is confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level
domain (gTLD) name ‘.com’ is . . . without legal
significance since use of a gTLD is required of domain name registrants . . .
.").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to prove that it does have rights or legitimate interests in it. However, Respondent has failed to respond to the Complaint with any assertions of its rights. 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).”). The Panel finds that Complainant has presented a prima facie case, and will consider whether the evaluation of the evidence on record demonstrates rights or legitimate interests under Policy ¶ 4(c).
Respondent uses the <dermaide.com> domain name, which incorporates Complainant’s mark, to direct Internet users to a website promoting its Injection Site Solution product. Respondent’s website includes claims and descriptions of Injection Site Solution, which are similar to those made by Complainant regarding its Dermaide product. Despite using the <dermaide.com> domain name, Respondent’s website does not contain any reference to an entity or product called Dermaide. The Panel determines that Respondent is in direct competition with Complainant and registered the <dermaide.com> domain name to divert Internet users who are interested in Complainant’s product to its own website. Using the disputed domain name in this fashion 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 pursuant to Policy ¶ 4(c)(iii). See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website). Moreover, the fact that Complainant had previously registered the domain name further convinces the Panel that Respondent lacks rights or legitimate interests in the domain name. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the same domain name is a factor in considering the respondent’s rights or legitimate interests in the domain name).
Other than Respondent’s infringing use of Complainant’s DERMAIDE mark in its domain name, there is no evidence that Respondent is commonly known by the <dermaide.com> domain name. Respondent is identified in the WHOIS database as “Melanie Summers.” Complainant asserts that Respondent is not a licensee of Complainant and has not received permission to use Complainant’s mark. The Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to 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) 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <dermaide.com> domain
name, which is identical to Complainant’s DERMAIDE mark, to promote a product
in direct competition with Complainant.
In doing so, Respondent is taking advantage of Internet users’ confusion
about the relationship between the disputed domain name and Complainant’s mark
for commercial gain. Such use of the
disputed domain name constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See 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)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14,
2001) (finding bad faith where the respondent used the domain name, for
commercial gain, to intentionally attract users to a direct competitor of the
complainant).
The fact that Complainant previously held the <dermaide.com>
domain name is further evidence that Respondent registered the domain name in
bad faith. See InTest Corp. v. Servicepoint, FA 95291
(Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously
used by the Complainant, subsequent registration of the domain name by anyone
else indicates bad faith, absent evidence to the contrary.”).
Additionally, because Complainant
and Respondent sell competing products, the Panel infers that Respondent is
using the domain name to disrupt Complainant’s business by diverting Internet
users who are interested in Complainant’s product to its own website. Using the disputed domain name to
disrupt Complainant’s business constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent
registered the domain name in question to disrupt the business of the
complainant, a competitor of the respondent).
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 <dermaide.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: April 3, 2006
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