Pacific BioScience Laboratories, Inc. v. Bin Jiang
Claim Number: FA1201001426467
Complainant is Pacific BioScience Laboratories, Inc. (“Complainant”), represented by Jodi A. DeSchane of Faegre Baker Daniels, LLP, Minnesota, USA. Respondent is Bin Jiang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <theclarisonic.com>, registered with Go Daddy.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2012; the National Arbitration Forum received payment on January 26, 2012.
On January 25, 2012, Go Daddy confirmed by e-mail to the National Arbitration Forum that the <theclarisonic.com> domain name is registered with Go Daddy and that Respondent is the current registrant of the name. Go Daddy has verified that Respondent is bound by the Go Daddy registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@theclarisonic.com. Also on January 31, 2012, 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 Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 24, 20012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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" 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 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <theclarisonic.com> domain name is confusingly similar to Complainant’s CLARISONIC mark.
2. Respondent does not have any rights or legitimate interests in the <theclarisonic.com> domain name.
3. Respondent registered and used the <theclarisonic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant develops and markets sonic skin care devices, including the products sold under the CLARISONIC mark. Complainant has registered its CLARISONIC mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 3,087,196 registered May 2, 2006;
Reg. No. 3,732,137 registered December 29, 2009; &
Reg. No. 3,880,043 registered November 23, 2010.
Respondent, Bin Jiang, registered the <theclarisonic.com> domain name on December 22, 2011. The disputed domain name previously resolved to Respondent’s own website where Respondent attempted to pass itself off as Complainant and sell Complainant’s products without authorization. The disputed domain name currently resolves to a different commercial website that, despite not mimicking the look and feel of Complainant’s website, uses Complainant’s mark and holds itself out as being associated with, or sponsored by, Complainant in an effort to sell Complainant’s products.
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 provides evidence of three trademark registrations with the USPTO for the CLARISONIC mark. In prior cases, complainants have proven rights in a mark by showing USPTO trademark registration, even when the respondent was located in a different country. See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). The Panel therefore determines that Complainant has rights in the CLARISONIC mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <theclarisonic.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name is comprised of Complainant’s mark in full, preceded by the generic article “the” and followed by the generic top-level domain (“gTLD”) “.com.” Prior panels have held that adding the term “the” and a gTLD to a complainant’s mark does not sufficiently alter the mark for purposes of Policy ¶ 4(a)(i). See Starwood Hotels & Resorts Worldwide, Inc. v. Domain Active Pty. Ltd., FA 214466 (Nat. Arb. Forum January 12, 2004) (concluding that the <thewhotel.com> domain name was confusingly similar to the W HOTEL mark despite the addition of the generic article “the” and the gTLD “.com”); see also Tex. Lottery Comm’n v. RN, WebReg, FA 348148 (Nat. Arb. Forum Dec. 13, 2004) (finding that preceding complainant’s mark with the generic term “the,” appending the gTLD and removing the space between the terms did not differentiate the disputed domain name from the mark according to Policy ¶ 4(a)(i)). The Panel concludes that Respondent’s <theclarisonic.com> domain name is confusingly similar to Complainant’s CLARISONIC mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has proven Policy ¶ 4(a)(i).
In attempting to satisfy the requirements of Policy ¶ 4(a)(ii), Complainant must present a prima facie case against Respondent and then the burden shifts to Respondent to prove rights and legitimate interests. Although Complainant effectively made its initial case against Respondent, Respondent offered no answer or contentions in response. As a result of Respondent’s lack of participation in these proceedings, the Panel may infer that Complainant’s contentions are accurate and that Respondent lacks rights and legitimate interests in the disputed domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names”); see also GMCI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). In the interest of fairness, however, the Panel will continue the analysis according to the Policy ¶ 4(c) factors to determine whether Respondent possesses rights and legitimate interests in the disputed domain name.
Complainant asserts that Respondent is not a licensee of Complainant and has no intellectual property or trademark rights in the disputed domain name. The WHOIS information for the disputed domain name lists the registrant as “Bin Jiang,” which suggests no nominal affiliation with the <theclarisonic.com> domain name. Based on these allegations and Respondent’s failure to respond, the Panel concludes that Respondent is not commonly known by the <theclarisonic.com> domain name and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant contends that Respondent previously used the <theclarisonic.com> domain name to resolve to a commercial website that attempted to pass itself off as Complainant in order to sell Complainant’s products. Complainant’s arguments and the accompanying screenshot of the resolving website reveal that Respondent displayed Complainant’s mark and product images on the resolving website and mimicked the look and feel, including the format and color scheme, of Complainant’s website. As a result, Respondent’s activities at the disputed domain name cannot be considered a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Complainant argues that Respondent has since changed the resolving website so that it no longer replicates Complainant’s website to the same degree. Complainant alleges, however, that the disputed domain name still resolves to a commercial website that uses Complainant’s mark and product images to suggest an affiliation with Complainant in an effort to sell Complainant’s products without Complainant’s authorization. The Panel finds that Respondent’s use of the disputed domain name to sell Complainant’s products without authorization does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) or 4(c)(iii). See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also Polycom, Inc. v. Telcom & Data Inc, FA 1245498 (Nat. Arb. Forum Mar. 16, 2009) (“The Panel finds that Respondent’s unauthorized sale of Complainant’s goods is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) , nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has proven Policy ¶ 4(a)(ii).
Complainant argues that both Respondent’s previous and current use of the <theclarisonic.com> domain name involve selling Complainant’s products without authorization. As a result, Respondent has put itself in the position of a competitor and disrupts Complainant’s business with the disputed domain name. The Panel finds that Respondent’s competitive use of the disputed domain name to disrupt Complainant’s business illustrates bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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).”); see also 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).
Complainant argues that Respondent previously used the <theclarisonic.com> domain name to pass itself off as Complainant in order to sell Complainant’s products. Complainant alleges that Respondent not only displayed Complainant’s CLARISONIC mark and logo but also mimicked the format, color scheme, and general look and feel of Complainant’s website. Complainant also asserts that Respondent subsequently changed the resolving website so that it no longer aimed to pass itself off as Complainant but still made liberal use of Complainant’s mark and product images in order to sell Complainant’s products. The Panel finds that Respondent’s attempts to pass itself off as Complainant and make use of Complainant’s mark in the disputed domain name, in order to attract Complainant’s customers and create confusion about Respondent’s identity or affiliation with Complainant in order to commercially profit by selling Complainant’s goods, is evidence of bad faith registration pursuant to Policy ¶ 4(b)(iv). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also HandHeld Entm’t v. WhoisGuard, FA 1008008 (Nat. Arb. Forum July 24, 2007) (holding that Respondent’s use of the disputed domain name for commercial gain by mimicking Complainant’s former website indicates bad faith registration and use under Policy ¶ 4(b)(iv)).
Complainant contends that at the time Respondent registered the <theclarisonic.com> domain name, Complainant’s mark had been used and federally registered for many years and was well-known. Complainant also argues that Respondent had actual knowledge of Complainant’s mark as evidenced by Respondent’s use of Complainant’s mark and product images on the resolving website and Respondent’s efforts to mimic Complainant’s website. The Panel finds that any arguments of bad faith based on constructive knowledge are irrelevant because UDRP precedent declines to find bad faith as a result of constructive knowledge. See The Way Int’l, Inc. v. Diamond Peters, D2003-0264 (May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.”). The Panel does find, however, that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name which is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Commc’ns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds Complainant Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <theclarisonic.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 8, 2012
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