James McBride v XXX
Claim Number: FA0610000827770
PARTIES
Complainant is James McBride,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mrskin.us>, registered with Go Daddy
Software, Inc.
PANEL
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on
On
On November 3, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 24, 2006 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute
Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On , pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <mrskin.us> domain name is identical to Complainant’s MR. SKIN mark.
2.
Respondent does not have any rights or
legitimate interests in the <mrskin.us>
domain name.
3.
Respondent registered and used the <mrskin.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, James McBride, has registered
the MR. SKIN mark with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 2,318,435 issued February 15, 2000) in connection with the provision
of a variety of entertainment services, including books, magazines,
newsletters, radio, and television programs.
Respondent registered the <mrskin.us> domain name
DISCUSSION
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 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; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant has established rights in the MR.
SKIN mark through registration with the USPTO pursuant to Policy ¶
4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Complainant contends that Respondent’s <mrskin.us> domain name is identical
to Complainant’s mark. Respondent’s
disputed domain name features Complainant’s entire MR. SKIN mark but omits the
period and space separating the terms “MR” and “SKIN” and adds the country-code
top-level domain (“ccTLD”) “.us.” The
Panel finds that neither the omission of punctuation or spaces nor the addition
of ccTLD’s sufficiently distinguishes Respondent’s <mrskin.us> domain name from Complainant’s MR. SKIN mark
pursuant to Policy ¶ 4(a)(i). See
Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum
Rights or Legitimate Interests
Complainant has alleged that Respondent does not have rights or legitimate interests in the <mrskin.us> domain name. 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). The Panel finds that Complainant has established a prima facie case for Respondent’s lack of rights or legitimate interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have 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”); 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 does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is a
member of Complainant’s affiliate program but has violated the terms of the
agreement in registering a domain name identical to Complainant’s mark. Complainant’s agreement stipulates that Respondent
has a limited and non-exclusive right in Complainant’s mark for use as a link
from Respondent’s legitimate website to Complainant’s. The agreement further provides that
Respondent may not register Internet domains featuring Complainant’s mark or any
other designation similar to Complainant’s mark. As such, the Panel finds that Respondent was
not using the disputed domain name in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate
non-commercial or fair use pursuant to Policy ¶ 4(c)(iv). See Sports
Moreover, Complainant contends that Respondent
does not hold a mark in the <mrskin.us>
domain name, is not commonly known by the
disputed domain name, and is not licensed to register names containing
Complainant’s mark. Respondent listed
its name as XXX in the WHOIS information and has not come forward with any
evidence suggesting that Respondent has obtained a license to register domain
names featuring Complainant’s mark or that it has rights in a mark of its
own. The Panel finds that Respondent is
not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii)
and has failed to establish rights or legitimate interests pursuant to Policy ¶
4(c)(i). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant contends that Respondent is
commercially benefiting from the unauthorized use of the MR. SKIN mark by
collecting referral fees through its participation in Complainant’s affiliate
program. In support of this assertion,
Complainant has submitted its affiliation agreement contract, which explicitly
prohibits a participant’s use of the MR. SKIN mark, or any similar variation
thereof, in a domain name. The Panel
finds that Respondent’s registration of the <mrskin.us> domain name and subsequent participation in
Complainant’s affiliate program is evidence of Respondent’s bad faith
registration and use for its own commercial gain pursuant to Policy ¶
4(b)(iv). See Deluxe Corp. v.
Finally, the Panel infers from Respondent’s participation in the affiliate program that it had actual knowledge of Complainant’s rights in the MR. SKIN mark. As such, the Panel finds this to be further evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual knowledge of a commonly known mark at the time of registration); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Complainant having established all three
elements required under the usTLD Policy, the Panel concludes that relief shall
be GRANTED.
Accordingly, it is Ordered that the <mrskin.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 14, 2006
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