Pristine International Traders v. Pristine Financial Services LLC
Claim Number: FA0701000882258
Complainant is Pristine International Traders (“Complainant”), represented by Harvey
Mechanic, 3755 Watseka Ave, Ste 201, Los Angeles, CA 90034. Respondent is Pristine Financial Services LLC (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wart-mole-vanish.com>, registered with Go Daddy Software, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 5, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 8, 2007.
On January 8, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <wart-mole-vanish.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 January 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 5, 2007 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@wart-mole-vanish.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 11, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <wart-mole-vanish.com> domain name is confusingly similar to Complainant’s WART MOLE VANISH mark.
2. Respondent does not have any rights or legitimate interests in the <wart-mole-vanish.com> domain name.
3. Respondent registered and used the <wart-mole-vanish.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pristine International Traders, markets and sells wart and mole removal products. Complainant has continuously used the WART MOLE VANISH mark since 2002 and has applied to register the mark with the United States Patent and Trademark Office (“USPTO”) (Serial No. 77/071,926 filed December 27, 2006).
Complainant alleges that Respondent is a former distributor and retailer of Complainant’s products. Complainant claims that it was the original registrant of the disputed domain name on December 3, 2002, but that Respondent obtained the registration password without Complainant’s authorization and changed the registration information to list itself as the registrant of the <wart-mole-vanish.com> domain name on January 5, 2005. Complainant provides printouts from the WHOIS database dated January 4, 2005 showing Complainant as the registrant of the disputed domain name. Prior to notice of this dispute, the disputed domain name resolved to a website similar to Complainant’s website at the <wartmolevanish.com> domain name but not selling any products. The website does not currently resolve to any content.
Upon Complainant’s information and belief, Respondent is holding the <wart-mole-vanish.com> domain name “hostage as leverage” to lower the amount of money Respondent owes Complainant.
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 does not own a trademark registration for the WART MOLE VANISH mark. Nevertheless, the Panel may find that a trademark registration is not required under Policy ¶ 4(a)(i) if Complainant can establish common law rights in the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Through continuous use of the WART MOLE VANISH mark since 2002 in connection with wart and mole removal products, Complainant’s mark has acquired sufficient secondary meaning for it to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
As the <wart-and-mole-vanish.com>
domain name contains Complainant’s entire common law mark and merely adds
hyphens between terms of the mark, Respondent has not sufficiently
differentiated the disputed domain name from the mark. Therefore, the Panel finds the disputed
domain name to be confusingly similar to the mark pursuant to Policy ¶
4(a)(i). See Health Devices Corp. v.
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and legitimate interests in the <wart-and-mole-vanish.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain name. Once Complainant makes 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).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights to or legitimate interests in the contested domain name. See Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent has no rights or legitimate interests in the
domain name because the respondent never submitted a response or provided the
panel with evidence to suggest otherwise); see also Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in
its failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”). However,
the Panel will now examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
Respondent is apparently a former distributor of Complainant
that improperly obtained the registration password for the <wart-mole-vanish.com> domain name
and changed the contact information to list “Pristine Financial Services LLC”
as registrant of the contested domain name.
In light of Respondent’s knowledge of Complainant’s rights in the WART
MOLE VANISH mark and the lack of evidence in the record to indicate otherwise,
the Panel concludes that Respondent is not commonly known by the contested
domain name under Policy ¶ 4(c)(ii). See Bluegreen Corp. v. eGo,
(finding that the respondent was not commonly known by the disputed
domain names where it maintained the domain name registrations on the
complainant’s behalf and then appropriated the disputed domain names for
itself, without permission from the complainant); see also Procter
& Gamble Co. v. Hlad, FA 126656 (Nat.
Arb. Forum Nov. 20, 2002) (“Respondent, merely a distributor of PUR brand
products, has no authorization to use the PUR mark for any trademark purpose,
such as the use in the domain name.”).
Moreover, after re-registering the <wart-mole-vanish.com> domain name in its own name, Respondent
apparently maintained a website similar to Complainant’s website at the
<wartmolevanish.com> domain name yet did not sell any products on the
website. Combined with Respondent’s
current non-use of the disputed domain name and status as a former distributor
of Complainant’s products, the Panel finds that there is insufficient evidence
to demonstrate that Respondent is using the disputed domain name in connection
with 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 Associated
Materials, Inc. v. Perma Well, Inc., FA
154121 (Nat. Arb. Forum May 23, 2003) (finding that, although the respondent
was a distributor of the complainant’s product, the respondent did not have
permission to use the complainant’s mark in its registered domain name and,
therefore, was not using the domain name as a bona fide offering of
goods or services or a legitimate noncommercial or fair use); see also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19,
2001) (finding no rights or legitimate interests in the domain name
<solgarvitamins.com> where the respondent did not use the domain name); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum
May 30, 2003) (finding that the respondent attempts to pass itself off as the
complainant online, which is blatant unauthorized use of the complainant’s mark
and is evidence that the respondent has no rights or legitimate interests in
the disputed domain name).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
From the evidence in the record, it appears that Respondent
is holding the disputed domain name “hostage” in order to lower the amount it
owes to Complainant. Such registration
and use is indicative of bad faith pursuant to Policy ¶ 4(b)(i). See
Xerox Corp. v. Imaging Solution, D2001-0313 (WIPO Apr. 25, 2001) (finding
that the respondent registered the domain name in the hope and expectation of
being able to sell it to the complainant for a sum of money in excess of its
out-of-pocket expenses and/or in the hope of forcing the establishment of a
business arrangement beneficial to the respondent); see also Gutterbolt, Inc. v. NYI Bldg. Prods. Inc.,
FA 96076 (Nat. Arb. Forum Dec. 29, 2000) (finding that use of a domain name as
a bargaining tool in an effort to receive compensation for a failed business
transaction is evidence of bad faith).
As a former distributor of Complainant using the <wart-mole-vanish.com> domain name to
redirect Internet users to its own website, the Panel finds that Respondent has
registered and used the disputed domain name in order to deceive Internet users
as to Complainant’s affiliation with the content of the website at the disputed
domain name, which constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Procter & Gamble Co.
v. Hlad, FA 126656 (Nat. Arb. Forum Nov. 20, 2002) (finding that the
disputed domain name was registered and used in bad faith where the respondent,
a distributor of the complainant’s products who was not a licensee of the
complainant, used the complainant’s mark in its domain name, suggesting a
broader relationship with the complainant and fostering the inference that the
respondent was the creator of the complainant’s products rather than a mere
distributor); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”).
The Panel also finds that Respondent had actual knowledge of
Complainant’s WART MOLE VANISH mark based on its previous distributorship
agreement with Complainant to sell Complainant’s products and subsequent
re-registration of the disputed domain name in its own name. Respondent took advantage of its business
deal with Complainant by re-registering the <wart-mole-vanish.com>
domain name in its own name and failing to give Complainant notice that it had
altered the registration information.
Respondent’s actions clearly constitute bad faith registration and use
under Policy ¶ 4(a)(iii). See Yahoo!
Inc. v.
The Panel concludes that Complainant has 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 <wart-mole-vanish.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 22, 2007
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