Dermalogica, Inc. and The International Dermal Institute, Inc. v. Raj Sukkersudha a/k/a Seimpact Limited
Claim Number: FA0610000811693
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 Raj Sukkersudha a/k/a Seimpact Limited (“Respondent”), 78 Glendon Way, Solihull, West Midlands B93 8SY, GB.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <dermalogicaproducts.info> and <dermalogicaproduct.com>, registered with Tucows Inc.
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 October 2, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 3, 2006.
On October 03, 2006, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <dermalogicaproducts.info> and <dermalogicaproduct.com> domain names are registered with Tucows Inc. and that Respondent is the current registrant of the names. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 October 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 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@dermalogicaproducts.info and postmaster@dermalogicaproduct.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 2, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dermalogicaproducts.info> and <dermalogicaproduct.com> domain names are confusingly similar to Complainant’s DERMALOGICA mark.
2. Respondent does not have any rights or legitimate interests in the <dermalogicaproducts.info> and <dermalogicaproduct.com> domain names.
3. Respondent registered and used the <dermalogicaproducts.info> and <dermalogicaproduct.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Since 1986, International Dermal Institute, Inc. has researched and promoted a wide range of skin care products. In connection with the promotion of these goods, International Dermal Institute, Inc. holds a trademark registration for the DERMALOGICA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,539,948 issued May 23, 1989).
International Dermal Institute, Inc licenses Dermalogica, Inc. to use the DERMALOGICA mark in furtherance of the promotion of its skin care products. Complainant provides information related to its products on its commercial website that resolves from the <dermalogica.com> domain name.
Respondent registered the <dermalogicaproducts.info> and <dermalogicaproduct.com> domain names on July 22, 2006. Both of the disputed domain names redirect Internet users to websites that mimic Complainant’s commercial website by prominently displaying Complainant’s DERMALOGICA mark, and publishing photographs and descriptions of Complainant’s products which are copied from Complainant’s commercial website. The resulting websites are commercially linked to skin care related websites.
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 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.”).
Complainant contends that the disputed domain names are confusingly similar to its DERMALOGICA mark. The <dermalogicaproducts.info> contains Complainant’s DERMALOGICA mark in its entirety and adds the term “products” and the generic top-level domain top-level domain “.info.” Similarly, the <dermalogicaproduct.com> domain name contains Complainant’s DERMALOGICA mark in its entirety and adds the term “product” and the gTLD “.com.” Under Policy ¶ 4(a)(i), the addition of common terms, such as “products” or “product,” and gTLDs, such as “.info” or “.com,” do not differentiate disputed domain names from otherwise unmodified marks contained within. Consequently, the Panel finds the <dermalogicaproducts.info> and <dermalogicaproduct.com> domain names to be confusingly similar to Complainant’s DERMALOGICA mark. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the <dermalogicaproducts.info> and <dermalogicaproduct.com> domain names. Complainant holds the initial burden of proof to establish that Respondent lacks rights and legitimate interests in the domain names. Once Complainant establishes a prima facie case in support of its allegations, 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) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). The Panel finds Complainant to have successfully established a prima facie case.
Respondent’s failure to answer the Complaint raises a
presumption that Respondent lacks rights and legitimate interests in the
disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”); 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”). Nonetheless, the Panel will examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
As specified in the WHOIS database, the registrant of the
disputed domain names is “Raj Sukkersudha” of “Seimpact Limited.” Due to the fact that there is no evidence in
the record to suggest otherwise, the Panel finds that Respondent is not
commonly known as either of the disputed domain names pursuant to Policy ¶
4(c)(ii). 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.”); see also Brown v.
Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the
respondent was not commonly known by the <mobilitytrans.com>
domain name because it was doing business as “Mobility Connections”).
Furthermore, both of the disputed domain names resolve to websites that closely mimic Complainant’s commercial website. The resulting commercial websites prominently display Complainant’s DERMALOGICA mark and provide pictures and descriptions of Complainant’s products in addition to providing numerous sponsored links to related skin care products. Moreover, the images and textual descriptions contained on the resulting websites are copied directly from Complainant’s website. The resulting websites are commercially linked to skin care related websites. The Panel finds that the use of confusingly similar domain names that resolve to websites that merely contains copied content for the purpose of commercially linking to related commercial websites fails to qualify as 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 MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent registered and used the
disputed domain names in bad faith.
Respondent’s use of confusingly similar domain names to display
photographs and descriptions of Complainant’s goods juxtaposed to a prominent
portrayal of Complainant’s DERMALOGICA mark creates a likelihood that consumers
will become confused as to Complainant’s sponsorship of or affiliation with the
resulting websites. Due to the commercial nature of the
resulting websites and the apparent likelihood of confusion from the content
contained within, the Panel finds Respondent to have registered and used the
disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See
World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306
(WIPO Jan. 24, 2001) (concluding that the respondent registered and used the
<wwfauction.com> domain name in bad faith because the name resolved to a
commercial website that the complainant’s customers were likely to confuse with
the source of the complainant’s products, especially because of the
respondent’s prominent use of the complainant’s logo on the site); see also Utensilerie
Assoc. S.p.A. v. C & M, D2003-0159
(WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products,
together with the domain name may create the (incorrect) impression that
Respondent is either the exclusive distributor or a subsidiary of Complainant,
or at the very least that Complainant has approved its use of the domain
name.”).
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 <dermalogicaproducts.info> and <dermalogicaproduct.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: November 14, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum