Western Holdings, LLC v. RegisterFly.com -Ref# 19846124 & 19846140 c/o Whois Protection Service - ProtectFly.com
Claim Number: FA0602000651448
Complainant is Western Holdings, LLC (“Complainant”), represented by Joel B. Rothman, of Rutherford Mulhall, P.A., 2600 North Military Trail, Fourth Floor, Boca Raton, FL 33431-6348. Respondent is RegisterFly.com -Ref# 19846124 & 19846140 c/o Whois Protection Service - ProtectFly.com (“Respondent”), P.O. Box 969, Margaretville, NY 12455.
The domain names at issue are <hylexineyecream.com> and <hylexin-reviews.com>, registered with Enom, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 28, 2006.
On February 28, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <hylexineyecream.com> and <hylexin-reviews.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 March 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 23, 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@hylexineyecream.com and postmaster@hylexin-reviews.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 29, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <hylexineyecream.com> and <hylexin-reviews.com> domain names are confusingly similar to Complainant’s HYLEXIN mark.
2. Respondent does not have any rights or legitimate interests in the <hylexineyecream.com> and <hylexin-reviews.com> domain names.
3. Respondent registered and used the <hylexineyecream.com> and <hylexin-reviews.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Western Holdings, LLC, has applied to register the HYLEXIN mark with the United States Patent and Trademark Office (“USPTO”). Complainant licenses the HYLEXIN mark to Bremenn Labs (“Bremenn”). Bremenn manufactures, distills, and sells various cosmetic products, including Hylexin, a topical preparation intended to treat the appearance of dark circles under the eyes. Hylexin is sold in numerous retail stores and on numerous websites including Bremenn’s website, which it operates at the <hylexin.com> domain name.
Respondent registered the <hylexineyecream.com> and <hylexin-reviews.com> domain names on July 18, 2005. Internet users who access the <hylexineyecream.com> domain name are directed to a website that appears to be sponsored by Bremenn or Complainant and offers Hylexin for sale. Complainant asserts that Respondent is not an authorized distributor or retailer of Hylexin. Internet users who access the <hylexin-reviews.com> domain name are directed to a website that lists links to other websites that offer a variety of products for sale, including Hylexin.
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 asserts that the HYLEXIN mark has acquired sufficient secondary meaning to establish common law rights based on Complainant’s use of the mark in connection with its business. Complainant and its licensee, Bremenn, have extensively promoted and sold Hylexin in the United States and abroad. Complainant and Bremenn have spent several million dollars to market Hylexin, and the product is sold in major retail stores such as Macy’s, Bloomingdale’s, and Saks Fifth Avenue. While Complainant has not clearly established the date on which it first used the HYLEXIN mark, Complainant applied for registration of the mark with the USPTO on January 6, 2005, prior to Respondent’s registration of the disputed domain names. The Panel determines that Complainant has established secondary meaning in the HYLEXIN mark for the purpose of demonstrating common law rights in the mark pursuant to Policy ¶ 4(a)(i). See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Respondent’s <hylexineyecream.com> and <hylexin-reviews.com> domain names both incorporate Complainant’s HYLEXIN mark in its entirety with the addition of a descriptive term to the mark and the top-level domain “.com.” The <hylexin-reviews.com> domain name also includes a hyphen between Complainant’s mark and the descriptive term. The addition of a descriptive term to Complainant’s mark does not adequately distinguish Respondent’s domain names from the mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Furthermore, the addition of either a hyphen or the top-level domain “.com.” is irrelevant to the analysis of whether the disputed domain name is confusingly similar to Complainant’s mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, Complainant’s assertions are unopposed, and the Panel will evaluate the evidence to determine if Respondent has rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent uses the <hylexineyecream.com> domain name to direct Internet users to a website that appears to be sponsored by either Complainant or its licensee, Bremenn. The <hylexineyecream.com> domain name itself incorporates Complainant’s mark and the website contains several references to Hylexin, including product descriptions and claims as well as a link labeled “Order Hylexin.” The Panel determines that Respondent uses the <hylexineyecream.com> domain name to pass itself off as Complainant Such use of the domain name is not in connection with 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 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); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant...”).
Additionally, Respondent uses the <hylexin-reviews.com>
domain name to direct Internet users to a website featuring links to other
websites that offer products for sale.
The Panel presumes that Respondent receives click-through fees in
exchange for diverting Internet traffic to these sites. Likewise, such use of the <hylexin-reviews.com>
domain name is not in connection with 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
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 Black
& Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June
24, 2002) (holding that the respondent’s use of the disputed domain name to
redirect Internet users to commercial websites, unrelated to the complainant
and presumably with the purpose of earning a commission or pay-per-click
referral fee did not evidence rights or legitimate interests in the domain
name).
There is no evidence that Respondent has ever been commonly known by the disputed domain name. Complainant asserts that Respondent has no affiliation or relationship with it, and is not commonly known by the disputed domain names. The Panel finds that Respondent has no rights or legitimate interests in this domain name under Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <hylexineyecream.com> domain name to host a website that includes Complainant’s HYLEXIN mark and references to the Hylexin product, giving every appearance of being associated or affiliated with Complainant’s business. Respondent uses this website to sell Complainant’s products. In addition, Respondent uses the <hylexin-reviews.com> domain name to host a website that presents links to Internet users for other websites that offer products for sale, presumably in exchange for click-through fees. Both uses of the disputed domain names constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that Respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that Complainant endorsed and sponsored Respondent’s website, and that such use constituted bad faith); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Respondent uses the <hylexineyecream.com> domain name to sell Complainant’s product without any authorization from Respondent. Respondent’s use of Complainant’s mark to sell Complainant’s own products amounts to disruption of Complainant’s business under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <hylexineyecream.com> and <hylexin-reviews.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: April 11, 2006
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