Dermalogica, Inc. and The International Dermal Institute, Inc. v. Titan Net a/k/a Titan
Claim Number: FA0604000671077
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 Titan Net, a/k/a Titan (“Respondent”), Net, Kenyatta Ave., PO Box 4276-30100, Eldoret, KE 30100.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <discountdermalogica.org>, registered with Intercosmos Media Group.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 31, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 3, 2006.
On April 3, 2006, Intercosmos Media Group confirmed by e-mail to the National Arbitration Forum that the <discountdermalogica.org> domain name is registered with Intercosmos Media Group and that Respondent is the current registrant of the name. Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group 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 April 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 25, 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@discountdermalogica.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 28, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <discountdermalogica.org> domain name is confusingly similar to Complainant’s DERMALOGICA mark.
2. Respondent does not have any rights or legitimate interests in the <discountdermalogica.org> domain name.
3. Respondent registered and used the <discountdermalogica.org> 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 it to Complainant Dermalogica, Inc. The Panel imputes licensee’s use of the mark to Complainant for purposes of this decision and will herein refer to both collectively as Complainant.
Complainant has marketed and sold skin care products under the DERMALOGICA mark for over fifteen years. Complainant has registered the DERMALOGICA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,539,948 issued May 23, 1989) and in numerous other countries around the world.
Respondent’s <discountdermalogica.org> domain name, which it registered on February 7, 2006, resolves to an Internet directory featuring advertisements and links to other websites selling the products of Complainant and its competitors.
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 DERMALOGICA mark through registration of the mark with the USPTO. 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.”); 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 <discountdermalogica.org> domain name is confusingly similar to Complainant’s distinctive DERMALOGICA mark because it contains the entire mark and simply adds the generic term “discount.” In Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000), the respondent registered numerous domain names adding generic terms to the complainant’s GEOCITIES and YAHOO! marks. The panel found that the respondent’s domain names were confusingly similar to the distinctive marks, because the domain names were “likely to mislead Internet users into believing that products and services offered by the respondents are being sponsored or endorsed by [Complainant].” Id. Therefore, Respondent’s addition of a generic term to Complainant’s DERMALOGICA mark in the <discountdermalogica.org> domain name renders it confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the <discountdermalogica.org> domain name. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <discountdermalogica.org>
domain name. See Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent has no rights or legitimate interests in the
domain name because the respondent never submitted a response or provided the
panel with evidence to suggest otherwise); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June
20, 2000) (“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Respondent has registered the domain name under the name “Titan
Net a/k/a Titan,” and there is no other evidence in the record that Respondent
is commonly known by the <discountdermalogica.org> domain
name. Consequently, Respondent has not
established rights or legitimate interests in the <discountdermalogica.org>
domain name pursuant to Policy ¶ 4(c)(ii).
See Great S. Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000)
(finding that the respondent was not commonly known by the domain name
<greatsouthernwood.com> where the respondent linked the domain name to
<bestoftheweb.com>); 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).
Furthermore, Respondent is using the <discountdermalogica.org>
domain name to redirect Internet users seeking Complainant’s skin care products
under the DERMALOGICA mark to a website that features advertisements and provides
links to websites selling Complainant’s products and those of its
competitors. Because Respondent
presumably collects click-through fees for each consumer it diverts to these
websites, Respondent is not using the disputed domain name 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 Nike, Inc. v. Dias, FA 135016
(Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods
or services where the respondent used the complainant’s mark without
authorization to attract Internet users to its website, which offered both the
complainant’s products and those of the complainant’s competitors); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <discountdermalogica.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because it is diverting Internet users seeking Complainant’s skin care products to a website providing links to Complainant’s competitors and unauthorized resellers of Complainant’s products. The Panel infers that Respondent receives click-through fees for each consumer it diverts to other websites. Consequently, Respondent is taking advantage of the confusing similarity between Complainant’s DERMALOGICA mark and the <discountdermalogica.org> domain name in order to profit from the goodwill associated with the mark, and this practice constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
Furthermore, by registering a domain name confusingly
similar to Complainant’s DERMALOGICA mark and using it to operate an Internet
directory providing links to websites selling the products of Complainant and
its competitors, Respondent has registered the domain name for the purpose of
disrupting Complainant’s business. Such
use of the disputed domain name to divert and 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 the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business).
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 <discountdermalogica.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 12, 2006
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