Philosophy, Inc. v Mary Le
Claim Number: FA0606000736870
Complainant is Philosophy, Inc. (“Complainant”), represented by J. Rick Taché, of Snell & Wilmer L.L.P., One Arizona Center, 400 E. Van Buren, Phoenix, AZ 85004-2202. Respondent is Mary Le (“Respondent”), 4307 Renaissance Drive, #216, San Jose, CA 95134.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <skinphilosophy.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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 26, 2006.
On June 25, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <skinphilosophy.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 June 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 17, 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@skinphilosophy.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 <skinphilosophy.com> domain name is confusingly similar to Complainant’s PHILOSOPHY mark.
2. Respondent does not have any rights or legitimate interests in the <skinphilosophy.com> domain name.
3. Respondent registered and used the <skinphilosophy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Philosophy, Inc., is a leading provider of high quality cosmetics and skin care products. In addition to distributing its products in various stores, Complainant operates a website at <philosophy.com>. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its PHILOSOPHY mark (Reg. No. 2,016,208 issued November 12, 1996).
Respondent registered the <skinphilosophy.com> domain name on November 2, 2004. Respondent’s disputed domain name resolves to a website that displays advertisements for products available for purchase from Respondent, as well as Respondent’s contact information for placing such orders.
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.
The Panel finds that Complainant’s trademark registration
with the USPTO sufficiently establishes Complainant’s rights in the PHILOSOPHY
mark. 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 <skinphilosophy.com> domain name is confusingly similar to Complainant’s PHILOSOPHY mark as it combines a term that describes Complainant’s goods and services with Complainant’s mark. In Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000), the panel found confusing similarity where the respondent’s domain name combined the complainant’s mark with a generic term that had an obvious relationship to the complainant’s business. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy). The Panel therefore finds that the combination of a word that can describe Complainant’s goods and services with Complainant’s PHILOSOPHY mark does not negate the confusing similarity between the disputed domain name and Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant has alleged that Respondent lacks rights or legitimate interests in the <skinphilosophy.com> 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the 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 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).”).
Complainant asserts that Respondent is not authorized to use
Complainant’s PHILOSOPHY mark and that Respondent is not associated with
Complainant in any way. Furthermore,
Respondent’s WHOIS information does not suggest that Respondent is commonly
known by the disputed domain name, and there is no evidence in the record to
suggest that Respondent is or has ever been known by the disputed domain
name. In Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003), the panel
found that without demonstrable evidence to support the assertion that a
respondent is commonly known by a domain name, the assertion must be
rejected. See Am. Online, Inc.
v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May
13, 2002) (finding that the respondent was not commonly known by <aolcamera.com>
or <aolcameras.com> because the respondent was doing business as “Sunset
Camera” and “World Photo Video & Imaging Corp.”).
The evidence on record indicates that Respondent is using
the disputed domain name to divert Internet users attempting to locate
Complainant’s website and products to Respondent’s own website where Respondent
offers competing products for sale. The
Panel finds that such commercial benefit that is dervived from use of
Complainant’s mark is not 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 Coryn Group,
Inc. v. Media Insight, FA 198959 (Nat.
Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain
names for a bona fide offering of
goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks); see also Gardens Alive, Inc. v. D&S Linx,
FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a
domain name for commercial benefit by diverting Internet users to a website
that sold goods and services similar to those offered by the complainant and
thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate
noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant has alleged that Respondent acted in bad faith
by registering and using the <skinphilosophy.com>
domain name that contains Complainant’s mark in its entirety. Respondent is using the disputed domain name
to redirect Internet users to a website that displays Respondent’s offering of
goods that compete with Complainant’s products. In S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000), the panel found that the respondent registered the domain
name in question to disrupt the business of the complainant, who was competitor
of the respondent. See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that
the respondent registered a domain name primarily to disrupt its competitor
when it sold similar goods as those offered by the complainant and “even
included Complainant's personal name on the website, leaving Internet users
with the assumption that it was Complainant's business they were doing business
with”). Consequently, the Panel finds
that Respondent’s use of the <skinphilosophy.com>
domain name constitutes a disruption of Complainant’s
business and is evidence of bad faith registration and use under Policy ¶
4(b)(iii).
Based on the uncontested
evidence presented by Complainant, the Panel finds that Respondent has
registered the disputed domain name containing Complainant’s mark in an attempt
to commercially benefit from the good-will associated with Complainant’s
PHILOSOPHY mark within the same business that Respondent operates in. The use of Complainant’s mark in the <skinphilosophy.com> domain name
also creates confusion as to Complainant’s sponsorship and affiliation with the
disputed domain name. The Panel finds
that such use of the disputed domain name constitutes bad faith registration
and use under 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 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).
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 <skinphilosophy.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: August 2, 2006
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