SkinMedica, Inc. v. Alan
Darush
Claim Number: FA0711001115189
PARTIES
Complainant is SkinMedica, Inc. (“Complainant”), represented by Dave
Deonarine, of Wilson Sonsini Goodrich & Rosati, 12235
El Camino Real,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skinmedicatns.com>, registered with Godaddy.com,
Inc.
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.
Michael A. Albert as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 28, 2007; the
National Arbitration Forum received a hard copy of the Complaint on November 29, 2007.
On November 29, 2007, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <skinmedicatns.com> domain name is
registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, 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 December 12, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 2, 2008 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@skinmedicatns.com by
e-mail.
A timely Response was received and determined to be complete on January 2, 2008.
On January 4, 2008, Complainant submitted a Request to Stay the Proceedings
pursuant to Forum Supplemental Rule 6(b)(i), which was granted by the
Forum. On February 13, 2008, Complainant
filed a Request to Remove the Stay under Forum Supplemental Rule 6(b)(ii),
which was promptly removed.
Along with Complainant’s Request to Remove the Stay, Complainant
submitted an Additional Submission on February 13, 2008 that was accepted and
determined to be complete by the National Arbitration Forum.
Respondent submitted an Additional Submission on February 19, 2008 that
was accepted and determined to be complete and timely.
On February 25, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Michael A. Albert as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant SkinMedica, Inc. is a specialty pharmaceutical company
involved in developing, acquiring and commercializing products that treat dermatologic
conditions and diseases and improve the appearance of skin.
Complainant asserts that it markets products under the SKINMEDICA and
TNS marks in many areas worldwide.
Complainant asserts that it has used the SKINMEDICA mark since at least
as early as 1999, and the TNS mark since at least as early as 2001. Complainant holds
Complainant asserts that Respondent registered the disputed domain name
on November 7, 2006, well after Complainant acquired rights in the SKINMEDICA
and TNS marks. Complainant asserts that
Respondent is using the disputed domain name to operate a commercial,
pay-per-click website displaying sponsored links to third party websites,
including websites offering products that compete with Complainant’s.
Complainant asserts that the <skinmedicatns.com>
domain name is confusingly similar to its SKINMEDICA and TNS marks, noting that
the domain name combines the two marks.
Complainant asserts that Respondent has no rights or legitimate
interests in respect of the disputed domain name. Complainant contends that Respondent’s use of
the domain name to redirect consumers to a pay-per-click website is neither a
use in connection with a bona fide
offering of goods and services, nor a legitimate noncommercial or fair use. Complainant also contends that Respondent is
not authorized to use Complainant’s SKINMEDICA or TNS marks (though Complainant
amends this assertion in its additional submission, detailed below).
Finally, Complainant asserts that Respondent’s registration and use of
the disputed domain name to redirect consumers to Respondent’s pay-per-click
website constitutes registration and use in bad faith.
B. Respondent
Respondent asserts that it has been authorized by Complainant to sell
SkinMedica brand products since 2005, and notes that it is listed on the SkinMedica
website as an authorized physician.
Respondent asserts that it has a legitimate interest in the disputed
domain name based on its sale of SkinMedica products.
Respondent asserts that it chose to sell SkinMedica products because of
those products’ prominence in the
Respondent admits that the SKINMEDICA mark was registered before
Respondent registered the disputed domain name, but notes that the TNS mark was
registered after the domain name registration.
Respondent contends that combining the two marks in the domain name
should not be confusing to the consumer.
Respondent asserts that the “intention of the challenged domain name
was to increase the sales of SkinMedica Products,” and has submitted a copy of
a proposed webpage being developed for use in connection with the disputed
domain name. Respondent admits that in
the meantime, “Godaddy has used the domain name to benefit it is [sic] own
pay-per-click. The Respondent would have
not allowed pay-per-click by another company.”
Respondent contends that it was making a legitimate noncommercial and
fair use of the domain name, without intent for commercial gain to misleadingly
divert consumers or to tarnish the trademark at issue.
Respondent denies that it registered the disputed domain name in bad
faith, and asserts that it believes it was fair for it to presume that
Complainant did not want to register the domain name. Respondent claims that Complainant gave
Respondent access to “web art” containing Complainant’s SKINMEDICA mark for use
on Respondent’s website. Respondent
believes that neither its contract agreement with Complainant nor Complainant’s
web site contains any prohibition on registration of domain names containing
Complainant’s marks.
Respondent asserts that it did not register the disputed domain name
“in an intentional attempt to attract for commercial gain, via pay-per-click”. Respondent contends that Godaddy parks all
domain names it registers with its own pay-per-click site until the domain
names become hosted websites, and that Respondent was not previously aware of
this practice.
Finally, Respondent requests that the Panel make a finding of reverse
domain name hijacking by Complainant.
C. Additional Submissions
1. Complainant’s Reply
In its Additional Submission, Complainant admits that Respondent is an
authorized provider of SkinMedica products, but asserts that Respondent has
never been licensed or otherwise authorized to use Complainant’s SKINMEDICA or
TNS marks in or as part of a domain name.
Complainant also acknowledges that its TNS mark was registered after
Respondent registered the disputed domain name, but asserts that the effective
date of Complainant’s rights in the mark is the date it filed the application
for trademark, July 25, 2005, which was prior to Respondent’s registration of
the domain name. Complainant thus
asserts that its rights in both marks predate Respondent’s registration of the
disputed domain name.
Complainant contends that Respondent is responsible for the website
associated with the disputed domain name and cannot shift blame to the
registrar. In response to Respondent’s
assertion that it intends to use a different website in connection with the
domain name, Complainant contends that this proposed website does not constitute
use of Complainant’s marks in connection with a bona fide offering of goods and services. Specifically, it asserts that following the
links on the proposed website redirects the user to <foreverskin.com>,
which offers Complainant’s products, but also offers products that are sold in
competition with Complainant’s products.
As further evidence that Respondent is not using Complainant’s marks in
connection with a bona fide offering
of goods, Complainant also asserts that Respondent’s proposed website does not
accurately disclose Respondent’s relationship with Complainant, and instead
suggests that Respondent is the trademark owner.
Complainant contends that it would constitute bad faith registration
and use for Respondent to use its proposed webpage in connection with the
disputed domain name. Additionally, Complainant
asserts that Respondent, as an authorized provider of Complainant’s goods, had
actual knowledge of Complainant’s marks prior to registering the disputed
domain name.
Finally, Complainant asserts that it initiated this domain name dispute
to protect its valuable intellectual property rights, and contends that
Respondent has not offered any evidence to support a finding of reverse domain
name hijacking.
2. Respondent’s Sur-Reply
Respondent asserts that it has no knowledge of any restriction on its
use of Complainant’s marks in domain name registrations, and contends that it
should not be required to anticipate Complainant’s potential objections.
Respondent contends that it has made at least perfunctory preparations
towards using the domain name in connection with a bona fide offering of goods or services. It asserts that it began working with a
website developer on the proposed website in Spring 2006, but that the site was
not completed due to cash flow constraints.
Respondent admits that its proposed website redirects to its <foreverskin.com>
site. Respondent asserts that it has not
yet developed the landing page for traffic from the proposed website, and
claims that it intends for such landing page to only offer Complainant’s
products. Respondent also claims that it
intends for the proposed website to include a clear and conspicuous disclaimer
indicating that the site operates independently of and is in no way affiliated
with Complainant.
Respondent asserts that it has no control over the content of
advertisements placed on the site currently associated with the disputed domain
name, and contends that it should not be held accountable for that content.
FINDINGS
The Panel finds that Complainant has
provided sufficient evidence to establish that the disputed domain name is identical or confusingly similar to
Complainant’s registered marks.
The Panel finds that Respondent has
failed to rebut Complainant’s showing that Respondent
lacks rights or a legitimate interest in the disputed domain name.
Finally, the Panel finds that Complainant has provided sufficient
evidence that Respondent has registered and used the disputed domain name in
bad faith.
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.
Complainant asserts rights in the SKINMEDICA
and TNS marks by virtue of
As to confusing similarity, Complainant
points out that the disputed domain name is a combination of both of
Complainants marks, with the addition of the generic top-level domain (“gTLD”)
“.com.” It is well established that
combining a complainant’s marks does not negate the confusing similarity of a
corresponding domain name. See Nintendo of Am. Inc. v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000). It is
also well established that the addition of a gTLD does not negate the
confusingly similar aspects of a disputed domain name. See
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).
Accordingly, the Panel finds that the
disputed domain name is confusingly similar to marks in which Complainant owns
rights.
Complainant
contends that Respondent is not commonly known by the <skinmedicatns.com> domain name and is not authorized to register domain names
featuring the SKINMEDICA and TNS marks.
Complainant does admit that Respondent is an authorized provider of
Complainant’s various skin products; however, Complainant never authorized Respondent
to use Complainant’s marks in or as part of a domain name.
Respondent asserts that it has no knowledge of any restriction on its
use of Complainant’s marks in domain name registrations, and contends that it
should not be required to anticipate Complainant’s potential objections.
Prior cases have established that
authorization to sell a complainant’s goods does not by itself grant a
respondent rights to use the complainant’s registered marks in a domain
name. See Ullfrotté AB v. Bollnas Imp.,
D2000-1176 (WIPO Oct. 23, 2000) (finding that although the respondent
legitimately sells goods originating from the complainant, this does not give
him the right to register and the use the mark as a domain name without the
consent of the holder of the trademark); see
also Toyota Jidosha Kabushiki Kaisha
t/a Toyota Motor Corp. v. Double Time Jazz, FA 113316 (Nat. Arb.
Forum July 10, 2002) (“Respondent cannot use Complainant’s trademark in a
domain name when the Respondent, even though selling Complainant’s goods, has
no permission to use the trademark as the domain name”). Here, Respondent has not obtained permission
to use Complainant’s registered marks in the disputed domain name, and has
offered no evidence that Respondent is commonly known by the domain name. The Panel thus finds that Respondent has
failed to establish rights or legitimate
interests under Policy ¶ 4(c)(ii).
Complainant further contends that Respondent is using the disputed domain name to operate a website that contains links to various third party websites, some of which offer products that compete with Complainant’s products. Prior cases have established that such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Accordingly, the Panel finds that Respondent’s current use of the disputed domain name is neither a bona fide offering of goods and services, nor a legitimate noncommercial or fair use.
Respondent goes on
to contend that the pay-per-click website currently associated with the
disputed domain name has been placed there by the registrar of the domain name,
Godaddy.com, Inc., until the domain name becomes associated with a hosted
website. Respondent asserts that it was
unaware of this practice when it registered the domain name, and has no control over the content of advertisements placed on
that site.
Respondent further asserts that it intends to
create a different website to which the disputed domain name will resolve. It asserts that it began working with a
developer in designing the site, and submitted a printout of the proposed site
to the Panel. Respondent contends that
this site has not been completed due to cash flow problems.
Complainant contends that even with this proposed different website, Respondent still fails to establish rights or legitimate interests in the domain name because this use is also neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
In Oki Data
· Respondent must actually be offering the goods or services at issue.
· Respondent must use the site to sell only the trademarked goods; otherwise it could be using the trademark to bait internet users and then switch them to other goods.
· The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.
· The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). Without expressly adopting the above criteria as a definitive rule, this Panel notes that even assuming that the stated criteria suffice to establish a respondent’s bona fide offering, the Respondent in this case has not met the stated criteria.
Complainant asserts
that Respondent’s proposed website would redirect to another site, <foreverskin.com>,
and that while the latter site offers Complainant’s products, it also offers
products of Complainant’s competitors, thus falling short of the second
requirement. Complainant further asserts
that Respondent’s proposed website does
not accurately disclose Respondent’s relationship with Complainant, and instead
suggests that Respondent is the trademark owner, violating the third
requirement.
Respondent admits that both of these assertions are true. It contends that it has not yet developed a landing page for users redirected from <skinmedicatns.com>, but that when it does, it will be designed such that it meets both of those requirements.
The Panel finds Respondent’s assertions as to its proposed future use of the disputed domain name unpersuasive. Respondent has had over a year to develop its own site in connection with the disputed domain name, and yet the registrar’s pay-per-click site still remains parked there. Why Respondent hasn’t at least redirected the disputed domain name to its <foreverskin.com> site is unclear. Moreover, even if a respondent’s stated intent to correct prior unauthorized uses were a sufficient basis to overlook such conduct (a notion finding little if any support in the Policy), the proposed site still would not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), and would not constitute a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).
Accordingly, the Panel finds that Respondent has failed to
rebut Complainant’s showing that Respondent lacks rights or a legitimate
interest in the disputed domain name.
Complainant contends that Respondent is using
the confusingly similar <skinmedicatns.com> domain name to provide users with services in direct competition with Complainant’s
services – both in the pay-per-click site currently used in connection with the
disputed domain name, as well as in Respondent’s proposed alternative website. Complainant asserts that this use supports a
finding of registration and use of the domain name in bad faith under Policy
4(b)(iii).
Additionally, Complainant contends that that
Respondent’s use of the disputed domain name may cause confusion among Internet
users as to Complainant’s sponsorship of or affiliation with Respondent’s website
and business. Such use has been found to
be evidence of use and registration in bad faith under Policy 4(b)(iv). See
Identigene, Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use
of the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the
site).
Finally, Complainant notes that Respondent is
an authorized provider of Complainant’s goods, and that Respondent stated in
its response that he “chose to sell SkinMedica products because of those
products’ prominence in the
Because the Panel agrees that the above described circumstances all constitute evidence of bad faith registration and use, unrebutted by adequate contrary evidence, it finds that Respondent has registered and used the <skinmedicatns.com> domain name in bad faith.
Reverse
Domain Name Hijacking
Respondent contends that Complainant has
engaged in reverse domain name hijacking, defined in the Rules as “using the
Policy in bad faith to attempt to deprive a registered domain-name holder of a
domain name”. Because the Panel finds
that Complainant has established all of the elements of its claim, a finding of
Reverse Domain Name Hijacking is inappropriate.
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 <skinmedicatns.com> domain name be TRANSFERRED
from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: March 20, 2008
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