Dermalogica, Inc. and The International Dermal Institute, Inc. v. Express Beauty
Claim Number: FA0611000841179
Complainant is 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 Express Beauty (“Respondent”), Silver Walk, 11,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dermalogica-uk.com>, registered with Schlund+Partner Ag.
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 November 13, 2006; the National Arbitration Forum received a hard copy of the Complaint November 15, 2006.
On November 15, 2006, Schlund+Partner Ag confirmed by e-mail to the National Arbitration Forum that the <dermalogica-uk.com> domain name is registered with Schlund+Partner Ag and that Respondent is the current registrant of the name. Schlund+Partner Ag verified that Respondent is bound by the Schlund+Partner Ag 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 November 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 11, 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-uk.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 18, 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-uk.com>, is confusingly similar to Complainant’s DERMALOGICA mark.
2. Respondent has no rights to or legitimate interests in the <dermalogica-uk.com> domain name.
3. Respondent registered and used the <dermalogica-uk.com> 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., for use in connection with a wide variety of innovative skin care products. Complainant researches, develops, produces, and markets professional skin care products for sale in the thousands of skin care centers worldwide. Complainant holds rights in over sixty registered trademarks for use in the marketing of these products including the DERMALOGICA mark registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,539,948 issued May 23, 1989).
Respondent registered the <dermalogica-uk.com> domain name August 19, 2006. The disputed domain name resolves to a website featuring links various competing commercial websites that sell Complainant’s products.
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 holds rights in more than sixty trademarks featuring the term DERMALOGICA. The Panel finds that such registration and the extensive development of its mark establishes Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (“Complainant owns a United States Patent and Trademark Office (‘USPTO’) registration issued September 5, 2000 for the RBK mark. This trademark registration is adequate to establish rights pursuant to Policy ¶ 4(a)(i).”).
The disputed domain name that Respondent registered, <dermalogica-uk.com>, is confusingly
similar to Complainant’s DERMALOGICA mark.
The domain name features Complainant’s mark and adds a hyphen before
adding the geographical designation “
The Panel finds that Complainant satisfied Policy ¶4(a)(i).
Complainant established with extrinsic proof in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant contends that Respondent lacks all such rights to and legitimate interests in the <dermalogica-uk.com> domain name. In certain circumstances, mere assertion of a lack of rights or legitimate interests may be sufficient to establish a prima facie case under Policy ¶ 4(a)(ii), shifting the burden to Respondent to set forth evidence of rights or legitimate interests. See 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). Respondent failed to submit a response in this case, and absent some showing by Respondent to counter Complainant’s prima facie case, the Panel will presume that Respondent does not have rights or legitimate interests under the Policy. Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
However, the Panel examines the record for evidence of rights or legitimate interests under Policy ¶ 4(c). Respondent’s WHOIS information identifies it as Express Beauty. Complainant has asserted that Respondent is not a licensee or affiliate of Complainant and that Complainant has not authorized Respondent to register domain names featuring any of Complainant’s marks. Absent evidence to the contrary, the Panel holds that Respondent is not commonly known by the <dermalogica-uk.com> domain name for purposes of Policy ¶ 4(c)(ii). See 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); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).”) No evidence on record suggests that Respondent is commonly known by the DERMALOGICA mark and Respondent has not come forward with such proof.
Further, in an attempt to compete with Complainant, Respondent is using the disputed domain name, which contains Complainant’s protected mark, to operate a website featuring links to websites that offer Complainant’s products for sale. An Internet user seeking Complainant’s products is diverted to Respondent’s site and the Panel infers that Respondent is receiving click-through fees for each misdirected Internet user searching for products bearing the DERMALOGICA mark. This is not a bona fide use under the Policy and Respondent, therefore, has failed to establish rights or legitimate interests by showing a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or by showing a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Complainant satisfied Policy ¶
4(a)(ii).
Complainant alleges that Respondent acted in bad faith in
registering and using a domain name that contains in its entirety Complainant’s
protected mark. Respondent’s use of the <dermalogica-uk.com> domain name for
the purpose of operating a website containing links to other competing
commercial websites featuring Complainant’s products constitutes a disruption
of Complainant’s business under the Policy.
In Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003), the respondent
was found to have registered a domain name in bad faith where it was evident
that the respondent was diverting Internet users to a competitor's website in
violation of Policy ¶ 4(b)(iii). This
Panel similarly finds bad faith registration and use in Respondent’s violation
of Policy ¶ 4(b)(iii).
Finally, Respondent’s use is likely causing confusion as to Complainant’s sponsorship of or affiliation with the <dermalogica-uk.com> domain name. The Panel infers that Respondent is financially benefiting from this confusion in violation of Policy ¶ 4(b)(iv) and that such use is evidence of Complainant’s bad faith registration and use. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
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-uk.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 29, 2006.
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