Klein-Becker IP Holdings, LLC v. R4L
Claim Number: FA0610000829175
Complainant is Klein-Becker IP Holdings, LLC (“Complainant”), represented by Catherine A. Van Horn, of Nagin Gallop Figueredo, P.A., 18001 Old Cutler Road, Suite 556, Miami, FL 33157-6416. Respondent is R4L (“Respondent”), 7703 E. Bullard, Clovis, CA 93611.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <strivectin-hc.com>, registered with Network Solutions, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 30, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 3, 2006.
On October 31, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <strivectin-hc.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 November 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 30, 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@strivectin-hc.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <strivectin-hc.com> domain name is confusingly similar to Complainant’s STRIVECTIN-SD mark.
2. Respondent does not have any rights or legitimate interests in the <strivectin-hc.com> domain name.
3. Respondent registered and used the <strivectin-hc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Klein-Becker IP
Holdings, LLC, and its subsidiaries and licensees manufacture, distribute and
sell various cosmecutical products.
Complainant has used the STRIVECTIN-SD mark since at least 2002 in
connection with a line of cosmetics sold in numerous retail stores and
online. Complainant holds a trademark
registration with the United States Patent and Trademark Office (“USPTO”) for
the STRIVECTIN-SD mark (Reg. No. 2,760,414 issued September 2, 2003). Complainant has also filed an intent-to-use
application for the STRIVECTIN-HC mark (App. No. 78/792433 filed January 16,
2006).
Respondent registered the <strivectin-hc.com> domain name on March 1, 2006. Respondent’s disputed domain name resolves to a website that contains hyperlinks to various third-party websites, some of which are in direct competition with Complainant, as well as hyperlinks to Complainant’s own website.
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 registration with the USPTO sufficiently establishes Complainant’s rights in the STIVECTIN-SD mark. See 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.”); 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 Panel finds that Respondent’s <strivectin-hc.com> domain name is confusingly similar to Complainant’s STRIVECTIN-SD mark as it is comprised of the dominant portion of Complainant’s mark and changes the last two letters of Complainant’s mark from “SD” to “HC,” which is the same two letters used on a new product of Complainant’s. The Panel accordingly finds that the change between Complainant’s mark and Respondent’s disputed domain name does not negate the confusing similarity between the two. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant must initially establish that Respondent lacks rights or legitimate interests with respect to the disputed domain name. However, once Complainant makes a prima facie case, the burden of proof shifts, and Respondent must prove it has rights or legitimate interests in the <strivectin-hc.com> domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that 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 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).”).
Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <strivectin-hc.com> domain name, and there is no other evidence in the record to suggest that Respondent is commonly known by the disputed domain name. Additionally, Complainant asserts that Respondent is not authorized to use Complainant’s STRIVECTIN-SD mark and that Respondent is not associated with Complainant in any way. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found no rights or legitimate interests where the respondent was not commonly known by the mark and had never applied for a license or permission from the complainant to use the trademarked name. See 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). The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent is using the disputed domain name to display hyperlinks to a variety of websites, including Complainant’s website as well as the websites of its direct competitors. The Panel infers that Respondent is using the disputed domain name to earn click-through fees, and accordingly finds that Respondent has not made both 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 WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); 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.
Based on the uncontested evidence presented by Complainant,
the Panel finds that Respondent receives click-through fees for the hyperlinks
displayed on the website that resolves from the <strivectin-hc.com> domain name. The Panel additionally finds that
Respondent’s disputed domain name is capable of creating a likelihood of
confusion as to Complainant’s sponsorship and affiliation with the disputed
domain name. Such commercial benefit
constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its
diversionary use of the complainant's mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Commc’ns Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the
respondent registered and used a domain name confusingly similar to the
complainant’s mark to attract users to a website sponsored by the respondent).
Moreover, the Panel
finds that Respondent is using the disputed domain name to redirect Internet
users to a website that contains a variety of hyperlinks, some of which are in
direct competition with Complainant. Such
use constitutes a disruption of Complainant’s business and qualifies as bad
faith registration and use under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites); 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 <strivectin-hc.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 20, 2006
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