Too Faced Cosmetics, Inc. v. Belize Domain Whois Service Lt
Claim Number: FA1010001350487
Complainant is Too Faced Cosmetics, Inc. ("Complainant"), represented by Amanda J. Mooney of Burkhalter Kessler Goodman & George, LLP, California, USA. Respondent is Belize Domain Whois Service Lt ("Respondent"), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toofacedmakeup.com>, registered with directNIC, LTD.
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 5, 2010; the National Arbitration Forum received payment on October 5, 2010.
On October 6, 2010, directNIC, LTD confirmed by e-mail to the National Arbitration Forum that the <toofacedmakeup.com> domain name is registered with directNIC, LTD and that Respondent is the current registrant of the name. directNIC, LTD has verified that Respondent is bound by the directNIC, LTD registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@toofacedmakeup.com. Also on October 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 9, 2010, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <toofacedmakeup.com> domain name is confusingly similar to Complainant’s TOO FACED mark.
2. Respondent does not have any rights or legitimate interests in the <toofacedmakeup.com> domain name.
3. Respondent registered and used the <toofacedmakeup.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Too Faced Cosmetics, Inc., operates an international makeup and cosmetics business. Complainant registered its TOO FACED trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,265,543 issued July 27, 1997).
Respondent registered the <toofacedmakeup.com> domain name on December 9, 2005. The disputed domain name resolves to a website featuring links to Complainant’s competitors’ websites in the makeup and cosmetic industry.
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 must establish two requirements under Policy ¶ 4(a)(i); that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.
Complainant contends it has established rights in the TOO FACED mark based on its registration of the mark with the USPTO (e.g., Reg. No. 2,265,543 issued July 27, 1997). Previous panels have determined that registration with a federal trademark authority is sufficient to establish rights in a mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Accordingly, the Panel concludes Complainant’s trademark registration of the TOO FACED mark with the USPTO establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges Respondent’s <toofacedmakeup.com> domain name is confusingly similar to Complainant’s TOO FACED mark. The disputed domain name incorporates all of Complainant’s TOO FACED mark while removing the space between the terms of the mark and adding the descriptive term “makeup” to the end of Complainant’s mark. Additionally, Respondent added the generic top-level domain (“gTLD”) “.com.”
Previous panels have found that the removing spaces between terms, and adding descriptive terms and a gTLD does not distinguish a respodent’s domain name from a complainant’s mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Accordingly, the Panel concludes Respondent’s <toofacedmakeup.com> domain name is confusingly similar to Complainant’s TOO FACED mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant contends Respondent lacks rights and legitimate interests in the <toofacedmakeup.com> domain name. Previous panels have determined that a prima facie showing, made by a complainant, shifts the burden to the respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has made a prima facie showing and because Respondent failed to make a timely response, the Panel may assume that it does not have rights or legitimate interests in the <toofacedmakeup.com> domain name. However, the Panel will examine whether the record shows Respondent has rights or legitimate interests in the <toofacedmakeup.com> domain name under Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant argues Respondent is not commonly known by the <toofacedmakeup.com> domain name. Respondent has not alleged any evidence supporting a finding that it is known by the disputed domain name. The WHOIS information does not indicate that Respondent is commonly known by the disputed domain name and the Panel finds no evidence in the record that would provide a basis for finding Respondent is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the <toofacedmakeup.com> domain name under 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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant contends Respondent uses the disputed <toofacedmakeup.com> domain name to resolve to a directory containing hyperlinks to Complainant’s cosmetic retail competitors and other unrelated websites. The Panels finds that Respondent’s use of a confusingly similar domain name to operate a website featuring links to Complainant’s competitors in the makeup industry is not a bona fide offering or goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
The Panel concludes that Policy ¶ 4(a)(ii) has been established.
Respondent’s <toofacedmakeup.com> domain name resolves to a website featuring hyperlinks to the websites of Complainant’s competitors in the cosmetic retail business. Respondent’s disputed domain name registration seeks to profit from Internet users’ recognition of Complainant’s TOO FACED mark, while disrupting Complainant’s business. Given Complainant’s established rights in the mark, the Panel supports a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
The Panel infers Respondent receives click-through fees from the hyperlinks posted on the disputed domain name and resolving directory website. Internet users searching for Complainant may find Respondent’s website instead because of Respondent’s use of a confusingly similar domain name. Complainant alleges Internet users will be confused as to Complainant’s sponsorship of and affiliation with the disputed domain name, resolving website and featured hyperlinks. Complainant contends Respondent attempts to profit from this confusion through the receipt of click-through fees. The Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toofacedmakeup.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: November 18, 2010
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