Dermalogica, Inc. and The International Dermal Institute, Inc. v. Whoisguard Protected a/k/a Whoisguard
Claim Number: FA0605000703621
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 Whoisguard Protected a/k/a Whoisguard (“Respondent”), 8939 S. Sepulveda Blvd, Westchester, CA, 90045.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dermalogica-online.info>, registered with Enom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 11, 2006; the National Arbitration Forum received a hard copy of the Complaint May 12, 2006.
On May 12, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <dermalogica-online.info> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 15, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 5, 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@dermalogica-online.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 9, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <dermalogica-online.info>, is confusingly similar to Complainant’s DERMALOGICA mark.
2. Respondent has no rights to or legitimate interests in the <dermalogica-online.info> domain name.
3. Respondent registered and used the <dermalogica-online.info> 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, which it in turn licenses to Complainant Dermalogica, Inc. These two entities will be collectively referred to as “Complainant.” Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,539,948 issued May 23, 1989) for the DERMALOGICA mark, which Complainant uses in connection with a wide range of high quality skin care goods and services. Complainant operates a website at the <dermalogica.com> domain name which provides information about Complainant’s products, and locations and contact information for skin care professionals offering Complainant’s products as well as general skin care information.
Respondent registered the <dermalogica-online.info> domain name October 7, 2005. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website, which features links to competing websites offering both Complainant’s goods and services as well as goods and services similar to those offered by Complainant. Presumably, Respondent receives pay-per-click fees from these links.
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 will draw such inferences as the Panel 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 Complainant to 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 established using extrinsic proof in this proceeding that it has rights to the DERMALOGICA mark through registration of the mark with the USPTO. The Panel finds that registration of the mark is sufficient to establish Complainant’s rights in the 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 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.”).
The disputed domain name that Respondent registered, <dermalogica-online.info>,
is confusingly similar to Complainant’s DERMALOGICA mark because Respondent’s
domain name incorporates Complainant’s mark in its entrity, and adds the
descriptive term “online,” a hypehn, and the generic top-level domain
“.info.” The Panel finds that such
minor additions to Complainant’s registered mark result in a confusingly
similar domain name pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the complainant combined with a
generic word or term); see also Broadcom
Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding
the <broadcomonline.com> domain name is confusingly similar to the
complainant’s BROADCOM mark); Innomed Techs., Inc. v. DRP Servs., FA
221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level
domains are irrelevant for purposes of the Policy).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established using extrinsic evidence in this
proceeding that it has rights to and legitimate interests in the mark contained
in its entirety within the disputed domain name. Complainant alleged that Respondent has no such rights to or
legitimate interests in the <dermalogica-online.info> domain
name. This constitutes a prima facie
case for purposes of this Panel. Once
Complainant makes a prima facie case the burden shifts to the Respondent
to prove that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). The Respondent’s failure to
respond creates a presumption that Respondent does not have rights or
legitimate interests in the disputed domain name. 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).”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that the complainant’s
allegations are true unless clearly contradicted by the evidence).
Despite the presumption created in the absence of a Response from Respondent, this Panel evaluated whether or not the available evidence suggested that Respondent has rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is using the <dermalogica-online.info>
domain name to redirect Internet users who are seeking Complainant’s goods
and services to Respondent’s website that features links to websites offering
both Complainant’s goods and services
as well as competing goods and services. Respondent presumably receives a fee for these referral
links. Respondent’s use of a domain
name that is confusingly similar to Complainant’s DERMALOGICA mark to redirect
Internet users to Respondent’s website is neither a bona fide offering
of goods or services pusuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user); see
also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec.
31, 2002) (finding that the respondent’s diversionary use of the complainant’s
marks to send Internet users to a website which displayed a series of links,
some of which linked to the complainant’s competitors, was not a bona fide
offering of goods or services).
No evidence in the record suggests that Respondent is commonly known by the <dermalogica-online.info> domain name, either individaully or as a business. Complainant asserts that Respondent has no affiliation or relationship with Complainant that would create a legitimate reason for using Complainant’s trademark in a domain name, and theWHOIS information identifies Respondent as “WhoisGuard Protected.” Thus, Respondent has failed to establish rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also 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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleged that Respondent acted in bad faith. Respondent is using the <dermalogica-online.info>
domain name, which is confusingly similar to Complainant’s DERMALOGICA
mark, to divert Internet users to Respondent’s website, which features links to
Complainant and to competing third-party sites. The Panel finds that such use constitutes disruption of
Complainant’s business and is evidence of 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. The Panel makes the reasonable
inference that Respondent's purpose for registration and use of this domain
name containing Complainant’s protected mark was to either disrupt or create
confusion for Complainant's business, thus supporting a finding of 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).
Because the disputed domain name that Respondent registered, <dermalogica-online.info>, is confusingly similar to Complainant’s DERMALOGICA mark, Internet users may become confused and incorrectly assume that Complainant is endorsing, sponsoring or otherwise affiliating with Respondent’s website. This potential confusion allows Respondent to attract Internet users to its website where there are links to the websites offering goods and services in competition with Complainant. The Panel infers that Respondent is attracting Internet users for commercial gain by collecting pay-per-click fees from the links to third-party websites. The Panel finds that such use constitutes a bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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.’”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds that Complainant 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 <dermalogica-online.info> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 23, 2006.
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