DECISION

 

Colorganics v. Domain Administrator / Marketing Express

Claim Number: FA1604001672179

 

PARTIES

Complainant is Colorganics (Complainant), represented by Jeffrey M. Rosenfeld of KRONENBERGER ROSENFELD, LLP, California, USA. Respondent is Domain Administrator / Marketing Express (Respondent), Cayman Islands.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <colorganics.com> ('the Domain Name'), registered with Rebel Ltd.

 

PANEL

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.

 

Dawn Osborne of Palmer Biggs Legal as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 26, 2016; the Forum received payment on April 26, 2016.

 

On April 27, 2016, Rebel Ltd confirmed by e-mail to the Forum that the <colorganics.com> domain name is registered with Rebel Ltd and that Respondent is the current registrant of the name. Rebel Ltd has verified that Respondent is bound by the Rebel Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANNs Uniform Domain Name Dispute Resolution Policy (the Policy).

 

On April 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents registration as technical, administrative, and billing contacts, and to postmaster@colorganics.com. Also on April 29, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondents registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On May 25, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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 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 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

 

The Complainant's submissions can be summarised as follows:

 

Founded in 1997, Complainant is a manufacturer and seller of organic cosmetics. Since 1997 the Complainant has marketed and sold its products in connection with its COLORGANICS mark through brick and mortar retailers and online including from colorganics.com since 1999 until 2003 when it inadvertently let the Domain Name lapse. After this the Complainant re-registered a new domain name colorganics.net operated until filing of this Complaint. As a result of the Complainant's robust marketing efforts consumers have come to associate COLORGANICS with the Complainant. The Complainant currently sells its products in all 50 States in the United States and in multiple countries including Australia, New Zealand, Singapore and Taiwan. The Complainant has established its common law rights through its long and continuous use of the mark.

 

The Domain Name is identical to the COLORGANICS mark, and, in fact, for several years the Domain Name was owned by the Complainant. The Complainant has satisfied Policy 4(a)(i).

 

A domain name registrant generally lacks rights or legitimate interests in a domain name where the complainant has rights in a substantially similar mark that preceded the Respondent's registration of the domain. Significantly, panellists have consistently found that a respondent's opportunistic registration of a domain name after the complainant inadvertently let it lapse does not establish rights and legitimate interests in the Domain Name. Respondent has never been known by the name Colorganics. Respondent does not appear to be a bona fide commercial entity and does not market or sell any products in the regular course of its business. The Complainant has never authorised the Respondent to use its COLORGANICS mark. Panellists have also found that a respondent's use of a domain name to display a parked web page evidences the respondent's lack of rights in the mark at issue.

 

The Respondent's use of the Domain Name to display a parked web page from which Respondent's generates revenue is evidence of Respondent's bad faith pursuant to Policy 4(b)(iv) . Also Respondent's attempt to take advantage of Complainant's inadvertent failure to re-register the Domain Name is evidence of bad faith use and registration under Policy 4(a)(iii). Respondent also exhibited bad faith in offering to sell the Domain Name for a sum that exceeds any reasonable costs that Respondent incurred in acquiring and maintaining the Domain Name. The fact that the Complainant made the first offer is immaterial.

 

Respondent is using the Domain Name to display hyperlinked advertisements for competitive products. The Complainant offered to purchase the Domain name for $3000.00. The Respondent asked for $16,800.00 for the Domain Name in response.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

Founded in 1997, Complainant is a manufacturer and seller of organic cosmetics. Since 1997, Complainant has marketed and sold its products in connection with its COLORGANICS mark through brick and mortar retailers and online including from colorganics.com since 1999 until 2003 when it inadvertently let the Domain Name lapse and someone else registered it. After this the Complainant re-registered a new domain name colorganics.net operated until filing of this Complaint.

 

Respondent is using the Domain Name to display hyperlinked advertisements for competitive products. The Complainant offered to purchase the Domain name for $3000.00. The Respondent asked for $16,800.00 for the Domain Name in response.

 

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."

 

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.

 

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(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 (Forum July 31, 2000) (holding that the respondents 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.).

 

A. Identical or Confusingly Similar

 

The Complainant has been using the mark COLORGANICS in relation to cosmetics and has produced evidence that it registered the Domain Name in 1999 (before inadvertently letting it lapse), has been using colorganics.net as a substitute for its web site following loss of the Domain Name and has registered the COLORGANICS name as a Californian business in 2000. The Panelist is satisfied the Complainant owns common law trade mark rights in the COLORGANICS name. The Respondent has not responded to this contention or disputed this.

 

The Domain Name consists of the Complainant's mark COLORGANICS and the gTLD ".com." The addition of the gTLD ".com" is not taken into account for the test of confusing similarity under the Policy. See OL Inc. v. Morgan FA 1349260 (Nat. Arb. Forum. Nov 4, 2010) (concluding that the addition of the generic top level domain .com does not distinguish the disputed domain name from the mark). As such, the Domain Name is confusingly similar to the Complainant's COLORGANICS mark for the purposes of the Policy. As such the Complainant has satisfied the first limb of the Policy with respect to the Domain Name.

 

B. Rights or Legitimate Interests

 

The Respondent does not appear to have any trade marks associated with the name COLORGANICS. There is no evidence that they are commonly known by this name and they do not have any consent from the Complainant to use this name. They do not appear to have used the Domain Name for any bona fide offering of services. The who-is for the Domain Name has indicated that the Domain Name is for sale and points to pay per click links. The Respondent offered to sell the Domain Name to the Complainant for $16,800.00.

 

The Respondent does not explain why they have registered a domain name consisting of the Complainant's trade mark and used it for pay per click links relating to cosmetics, the area in which the Complainant trades. Given this and the offers for sale, the Panelist infers the Respondent's intentions were to sell the Domain Name or use it for pay per click links, for profit capitalizing on the Complainant's goodwill in its trade mark. See Disney Enters, Inc. v. Kamble FA 918556 (Nat. Arb Forum Mar 27 2007) (holding that the operation of a pay per click web site at a confusingly similar domain name was not a bona fide offering of goods and services under Policy 4(c)(i), nor a noncommercial or fair use under Policy 4(c)(iii). Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.

 

C. Registered and Used in Bad Faith

 

Paragraph 4(b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including,

"circumstances indicating that [the Respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name." The who-is record for the Domain Name has indicated that the Domain Name is for sale. The Respondent has also offered to sell the Domain Name to the Complainant for $16,800.00. The Respondent has given no satisfactory reason why it has a legitimate interest in a domain name comprising the Complainant's trade mark COLORGANICS and the gTLD ".com." Accordingly, the Panel finds on the balance of probabilities based on the evidence that the Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of the trademark COLORGANICS or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Domain Name; See World Wrestling Fed'n Entm't, Inc v.. Bosman D99-0001(WIPO Jan 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs). This can be so even where the Complainant initiates contact and makes the first offer See Moynahan v. Fantastic Sites, Inc. D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the domain name to the Complainant for $10,000.00 when the respondent was contacted by the complainant.). The Panel, therefore, finds that bad faith has been demonstrated under 4(b)(i) of the Policy. As such there is no need to further consider contentions of the Complainant with regard to additional grounds for bad faith.

 


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 <colorganics.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Dawn Osborne, Panelist

Dated: June 2, 2016

 

 

 

 

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