Nicholas V. Perricone, M.D. and N.V. Perricone LLC v Compana LLC

Respondent’s registration as technical, administrative and billing contacts, and to postmaster@perricone.com by e-mail.

A timely Response was received and determined to be complete on November 22, 2006.

A timely Additional Submission was received on November 27, 2006. Respondent filed a timely Sur-Reply to Additional Submission on December 1, 2006.

On November 29, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq. as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant Nicholas V. Perricone, M.D. and N.V. Perricone LLC (hereinafter”Complainant”) contends as follows: that he is a well known doctor of dermatology and the author of No. 1 Best Sellers Books, including “The Wrinkle Cure”, “The Perricone Prescription” and the “Perricone Promise”; that Dr. Perricone was featured on popular PBS TV fund raising programming, and was a popular guest on American television, including appearances on “The Today Show”, “Oprah”,“Larry King”, “20/20", “Good Morning America” and “The View”, among many others; that Complainant’s Annex 4 evidences copies of articles about Dr. Perricone in such publications as the “New York Times’, “The Wall Street Journal” “Vogue” “Harpers Bazaar” “W” “Forbes” “People” “WWD” and “USA Today”; that “Vogue” named Dr. Perricone as one of the best dermatologists in the US in 2001 and the opening of the Perricone Flagship store on Madison Avenue (NYC) was named one of the top ten beauty stores by WWD in 2005; and that in accordance with the Mirabella Affidavit Sec. 5, Dr. Perricone is a frequent keynote speaker on the medical and business lecture circuit.

Complainant also makes the following assertions. Dr. Perricone began selling skin care products under the trademarks N.V. PERRICONE, M.D. and N.V.PERRICONE, M.D. COSMECEUTICALS in 1998. The Complainant has had the URL <nvperriconemd.com> since 1998 and has maintained a website at that URL, since at least 2000. Complainant currently sells skin products and nutritional supplements at said domain name, at its 791 Madison Avenue flagship store and through aestheticians, dermatologists and high-end departments stores such as Saks Fifth Avenue, Sephora, Nieman Marcus and Nordstrom, at various locations around the country.

Complainant alleges that through the above-enumerated long standing activities, that the name PERRICONE became widely recognized as an indicator of source for his products and services.

Further, Complainant states that it has used and obtained registrations of the trademarks N.V. PERRICONE M.D.; N.V.PERRICONE, M.D. COSMECEUTICALS; N.V.PERRICONE, M.D. NUTRICEUTICALS; THE PERRICONE PROMISE; THE PERRICONE PRESCRIPTION; and other PERRICONE trademarks. Issued trademark registrations of the mark PERRICONE by itself, in Chinese characters, are granted in China and Taiwan.

Complainant Nicholas V. Perricone, M.D. states that he has conveyed his interest in the trademark rights and rights of publicity to Complainant N.V. PERRICONE LLC.

Complainant further contends as follows: Respondent Compana, LLC is both the registrar and the registrant of the domain name <perricone.com>. Respondent operates a website at <perricone.com> with sponsored links for skin care products, as well as for other categories of products and services. Respondent’s site is a ‘pay-per-click’ website in which links lead to the official N.V. PERRICONE M.D. website. Respondent has also established a web page at the URL <dr.perrricone.com> which contains links to web sites selling competitor’s skin care products, in addition to links of web sites of Complainant’s and their retailers.

Complainant asserts that Compana is not a licensee of N.V. PERRICONE M.D., nor is

it authorized to have a link to Complainant’s website. Complainant therefore alleges that Respondent has clearly intended for others to locate the Respondent’s website through use of Complainant’s name and mark PERRICONE.

Complainant states that on August 12, 2004, Complainant’s attorneys attempted to purchase the domain name <perricone.com> and were advised by Respondent that it would only enter negotiations if Complainant signed a release stating that any sales offer made by Respondent’s would not be construed in future proceedings as evidence of “bad faith”. Complainant says that it signed the Release and made offers to acquire the domain name. Complainant says that its offers were not only refused, but also that Respondent refused to return an executed copy of releasing document to Complainant. Complainant then states that it issued a Cease and Desist Letter to Respondent, who responded by filing on September 20, 2006, an Action for a Declaratory Judgment in the District Court of Dallas County, Texas to determine the validity of the release document. On October 11, 2006, a petition for removal of the action was filed in the United States District Court for the Northern District of Texas, Dallas Division by the Complainant. See Compana LLC v. N.V. Perricone LLC, No. 306-CV-1864.

Complainant alleges legal grounds for its request that domain name <perricone.com>

be transferred to Complainant as follows: The domain name <perricone.com> is identical to Complainant’s common law trademark rights in the name Perricone and is also confusingly similar to Complainant’s trademarks; that Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint; and that Respondent has registered and used the domain name in bad faith.

B. Respondent

Respondent Compana LLC (hereinafter “Respondent”) contends that it registers domain names that become available for registration through expiration and deletion. Respondent registers domain names which incorporate common words, descriptive and generic terms, common names, surnames and/or words and terms to which it believes no single party has exclusive rights. Respondent registered <perricone.com> on January 24, 2003, because it is a common surname for a vanity email service. Respondent says that it now hosts the disputed domain on a website that provides sponsored links and that the sponsored links are provided by Google. Therefore, Respondent contends that it has created a good faith business that is valuable to Internet users to locate providers of goods and services, through reference to common well known generic, descriptive and geographically descriptive terms.

Respondent further contends that Complainant has not established or substantiated any trademark rights in the term “Perricone” as this surname has not been registered by Complainant as a trademark and Complainant has not filed a (2)(f) declaration to establish secondary meaning in the surname Perricone. Therefore, the Respondent contends that the domain name <perricone.com> is not identical to, or confusingly similar to, any mark held by Complainant.

Respondent further contends that the Respondent has rights and legitimate interests in domains comprised of common names, surnames, generic words and/or descriptive terms, not associated with the Complainant’s business. Respondent further contends that before notice of this dispute, Respondent used the disputed domain name in connection with a bona fide offering of services, pursuant to ICANN Policy. Respondent maintains that its registration and use of the subject domain name in connection with Internet searching, locator, and/or targeted advertising services, does not comprise “bad faith” under ICANN Policy, and therefore, Complainant’s attempts to impute bad faith, must fail.

Respondent contends that Complainant has disclaimed legal rights in the domain name <perricone.com> via a Release, purportedly signed by both parties, on or about September 01, 2004, that the Release is valid; and that the Release is dispositive and a bar to the present action. Therefore, Respondent asserts that the Panel is compelled to either dismiss the suit or to acknowledge that Complainant has waived its claim to the contested domain name.

C. Additional Submissions

Complainant, in an Additional Written Statement, asserts that Complainant has enforceable rights in <perricone.com>, even absent a Section 2(f) trademark filing, because of its registration for the trademark N.V. PERRICONE, M.D. and the ample evidence of record, that finds that PERRICONE has become uniquely associated with the Complainant, and as such, has acquired secondary meaning.

Complainant states at least four reasons why Respondent’s purported Release does not bar Complainant from asserting its rights in PERRICONE in this proceeding. First, Complainant states that the Release is ineffective to bar assertion of present rights because it does not release Respondent from liability arising after the Release was executed. Second, Complainant asserts that the Release was not supported by consideration and is therefore, void. Third, the Complainant asserts that the Release is unenforceable because of Respondent’s failure to perform. Finally, Complainant asserts that the Release was induced by fraud and voided by Complainants on April 11, 2005.

Complainant in its Additional Submission further states that Respondent does not have any legitimate interest in <perricone.com>. Complainant states that this is not a case involving a generic term domain name, as <skincareproduct.com>; and this is not a case involving a purely personal name which is not used for a trademark. This case involves a claim of rights in PERRICONE as a trademark for skin care products.

Complainant further cites case law stating that a pay-per-click business using a domain name to operate a web site featuring commercial links to third party web sites, through which it receives a referral fee, is not a bona fide offering of goods and services.

Complainant states in its Additional Submission that Respondent is using <perricone.com> in bad faith, in that the only meaning of PERRICONE that can be found on Respondent’s web site is the trademark of the Complainant, which is being used to attract traffic, that might click through to a competitors product.

Complainant lastly states in its Additional Submission that Complainants’ trademark N.V. PERRICONE M.D. COSMECEUTICALS, Reg. No. 2,237,822 was registered in 1999 and that the domain name <perricone.com> was obtained by Respondent nearly four years later in 2003. Therefore, Complainant concludes that Respondent has no basis to claim that its activities were, or are, conducted in good faith.

Respondent in its Sur-Reply states that the additional materials submitted by Complainant should not be considered; and that Complainant admits that PERRICONE is merely a surname and is not its mark; and that Complainants’ reliance on Texas common law in a UDRP proceeding is misplaced; and that pay per click services are accepted by Complainant and others as valid.

FINDINGS

The purported Release, signed on or about September 1, 2004, by at least one party, is unenforceable and is not a bar to the instant action. Complainant has established that the domain name <perricone.com> registered by Respondent is identical to Complainant’s common law trademark and is confusingly similar to the registered trademarks of Complainant. Respondent has no rights or legitimate interest in the domain name. Respondents have registered and are using the domain name <perricone.com> in bad faith. As such, the Panel finds that the relief requested by Complainant shall be granted and accordingly, the domain name <perricone.com> shall be transferred to Complainant.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

Panel has been persuaded by Complainant’s arguments in its Additional Submission regarding the unenforceability of the purported release. Further, Panel has jurisdiction

to decide this dispute, because the registration agreement pursuant to which Respondent registered the Domain Name expressly incorporates the Policy.

Complainant asserts and submits extrinsic evidence to support that it has established rights in the N.V. PERRICONE M.D. mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,423,574 issued January 23, 2001). The Panel finds that Complainant has established rights in the N.V. PERRICONE M.D. mark through its valid trademark registration with the USPTO, and that its rights in the mark predate Respondent’s registration of the <perricone.com> domain name on January 24, 2003. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the Complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).

Additionally Complainant asserts that it has established common law rights in the PERRICONE mark through continuous and extensive use of the mark in connection with the promotion of skin care products and skin care services. In support of this assertion, Complainant has submitted voluminous examples that feature Complainant’s use of the PERRICONE mark in commerce. The use of the PERRICONE mark was evidenced by: book publications entitled “The Perricone Promise,” “The Perricone Weight Loss Diet”and “The Perricone Prescription” as well as prominent magazine and newspaper articles in “The New York Times” “Vogue” “ Forbes” and other pre-eminent print sources; and television appearances including “Oprah” “The View” “Good Morning America” and so on. The Panel holds that the submitted evidence is sufficient to establish that Complainant has successfully established secondary meaning in the PERRICONE mark, and therefore, Complainant has attained common law rights in the PERRICONE mark for the limited purposes of Policy ¶ 4(a)(i). See 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); see also McCarthy on Trademarks and Unfair Competition, Sec. 25:74.2 (4^th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required-unregistered or common law trademark or service mark rights will suffice “to support a domain name complaint under the Policy”.

The <perricone.com> domain name is confusingly similar to the Complainant’s registered N.V. PERRICONE M.D. mark. The disputed domain name contains PERRICONE, the prominent feature of the registered mark, in its entirety, and omits the

surrounding “N.V.” and “M.D.” abbreviations. The mere omission of non-prominent

features of the mark, such as “N.V.” or “M.D.,”do not sufficiently differentiate the disputed domain name from the mark that is otherwise contained within, for the limited purposes of Policy Sec. 4(a)(i). See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.” ‘Mod” cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”); see also Sony Kabushiki v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark “SONY”and thus Policy Sec. 4(a)(i) is satisfied”.).

The Panel not only finds that the evidenced use of the PERRICONE mark substantiates Complainant’s common law claim, but also that the disputed domain name is identical to Complainant’s common law mark because it contains the mark in its entirety and merely adds a top level domain. See Weil v. Domain Adm’r, FA 206341 (Nat. Arb. Forum Dec. 8, 2003) (finding the <andrewweil.com> domain name to be identical to Complainant’s ANDREW WEIL mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel makes no finding as to whether Complainant has exclusive rights in the PERRICONE mark. Such an investigation is not required for a complete analysis of Policy ¶ 4(a)(i). Pursuant to Policy ¶ 4(a)(i), there is no such requirement that Complainant should have exclusive rights in the mark under Policy Sec. 4(a)(i). See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) holding that ICANN Policy ¶ 4(a)(i) does not require the Complainant to demonstrate ‘exclusive rights, but only that the Complainant has a bona fide basis for making the Complaint in the first place).

Rights or Legitimate Interests

Complainant has submitted evidence sufficient to make a prima facie case that Respondent lacks rights and legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii). Therefore, the burden shifts to Respondent to show that it does have rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”).

The Complainant alleges that Respondent is not commonly known by the disputed domain name. According to the WHOIS database, Respondent registered the disputed domain name as “Compana LLC” of Carrolton, Texas. Because there is not evidence

in the record to suggest that Respondent is in any way known by the disputed domain name, the Panel finds that Respondent is not commonly known by the disputed domain name, pursuant to Policy ¶ 4(c)(ii). See Am. Online, Inc. V. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the Respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the Respondent was doing business as “Sunset Camera” and “World Photo

Video & Imaging Corp.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a Respondent is commonly known by a domain name, the assertion must be rejected).

Furthermore, Complainant asserts that Respondent’s use of the disputed domain name fails to satisfy the requirements of Policy ¶¶ 4(c)(ii) and (iii). The disputed domain name resolves to a website that displays numerous text-based links related to skin care products. The Panel finds that the use of a disputed domain name that is either confusingly similar or identical to a mark held by another party to display advertisements related to the mark-holder neither amounts to a bona fide offering of goods or services pursuant to Policy ¶ 4(c) (i) nor a legitimate non-commercial use pursuant to Policy ¶ 4(c)(i). See Geoffrey, Inc. v. Toyrus.com, FA150406 (Nat. Arb. Forum Apr.25, 2003) (holding that Respondent’s use of the <toyrus.com> domain name, is a simple misspelling of the Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of

goods or services nor a legitimate non-commercial or fair use of the domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb 10, 2003) (holding that the Respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the domain name.).

Registration and Use in Bad Faith

Complainant asserts that Respondent has registered and used the disputed domain name in bad faith. Respondent had registered the name in bad faith in 2003, when he was on notice as to Dr. Perricone’s wide print and media notoriety, his website of <nvperricone.com> since at least 2000, and his USPTO registration in 2001 of N.V. Perricone M.D. Respondent has used the disputed domain name to resolve to a website

that displays numerous text-based links to skin care products. The Panel infers from the nature of the resulting website that Respondent is receiving commercial gain as a result

of the visitors that click on the text-based links. Additionally, the Panel finds a

likelihood that visitors will believe Complainant to be affiliated with, or in sponsorship of, the resulting website because the resulting website displays content regarding skin

care products, the same line of business in which Complainant is involved. Accordingly, the Panel finds the Respondent to have registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because it has attempted to attract Internet users, for commercial gain, by feeding off of the goodwill associated with Complainant’s marks.

This finding of bad faith is not affected by the existence or enforceability, if any, of the liability release discussed in the Complaint, Response and Complainant’s Additional Submission. This finding is based upon the registration and actual use of the disputed domain name, rather than the negotiations that took place after the signing of the purported release. See Philip Morris Inc. v. R9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the Respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the Respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <perricone.com> domain name be TRANSFERRED from Respondent to Complainant.

Carol M. Stoner, Esq., Panelist

Dated: December 13, 2006

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