Candela Corporation v. Joseph Parisi
Claim Number: FA1405001560791
Complainant is Candela Corporation (“Complainant”), represented by Sylvia Mulholland of Law Office of Sylvia Mulholland, California, USA. Respondent is Joseph Parisi (“Respondent”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gentlehairremoval.com>, registered with GoDaddy.com, LLC.
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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2014; the National Arbitration Forum received payment on May 22, 2014.
On May 22, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <gentlehairremoval.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 2014 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@gentlehairremoval.com. Also on May 23, 2014, 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.
A timely Response was received and determined to be complete on June 12, 2014.
Complainant submitted an Additional Submission which was received and found to be compliant on June 17, 2014.
On June 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Respondent submitted an Additional Submission which was received and found to be compliant on June 20, 2014.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses GENTLE HAIR REMOVAL in connection with its medical and aesthetic procedures 3``for hair removal. Complainant first used the mark in 2012, and subsequently registered the mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,495,995 registered Mar. 11, 2014, filed Jan. 2, 2013). Respondent’s <gentlehairremoval.com> domain name is identical to Complainant’s mark. Respondent registered the domain name on July 25, 2004.
Complainant contends Respondent has no right or legitimate interest in the <gentlehairremoval.com> domain name. Complainant has never permitted Respondent’s use of the GENTLE HAIR REMOVAL mark. Respondent has failed to show a bona fide offering of goods through the <gentlehairremoval.com> domain name. Complainant contends Respondent registered the domain name to sell it, or to prevent others from registering this domain name.
B. Respondent
Respondent contends Complainant failed its burden to establish its priority of rights or Respondent’s lack of legitimate interests, or bad faith.
Respondent’s <gentlehairremoval.com> domain name registration predates Complainant’s trademark. Respondent registered the domain name about eight and a half years before Complainant alleges any use of the GENTLE HAIR REMOVAL mark. Complainant’s other trademarks are collateral and irrelevant to this proceeding as this trademark is not confusingly similar to any of those other marks, nor does Complainant allege as such. It is impossible for Respondent to have registered this domain name in bad faith given the lengthy predating period.
The Complainant established that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and that Respondent has no rights or legitimate interests in the domain. However, Complainant failed to establish that the domain name was registered and is being used in bad faith. The claim is denied.
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.
Complainant uses GENTLE HAIR REMOVAL in connection with its medical and aesthetic procedures—specifically, the mark is used for hair removal. Complainant first used the mark in 2012, and subsequently registered the mark with the USPTO (Reg. No. 4,495,995 registered Mar. 11, 2014, filed Jan. 2, 2013). Complainant’s usage of the GENTLE HAIR REMOVAL mark may be evidenced as far back as January 2, 2013 through USPTO registration. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant further claims Respondent’s <gentlehairremoval.com> domain name is identical to Complainant’s mark. The domain name here is identical, as the domain name takes the entire mark, removes the spacing, and merely affixes the generic top-level domain ("gTLD") “.com.” See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the domain name from the mark).
Respondent argues that its registration of the <gentlehairremoval.com> domain name predates Complainant’s alleged rights in the mark, however, Policy ¶ 4(a)(i) considers only whether Complainant has rights in the mark(s) and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”). Because Respondent’s argument is not applicable under Policy ¶ 4(a)(i), the argument will be considered under Policy ¶ 4(a)(iii).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
In its Additional Submission, Complainant alleges that Respondent is not known by the<gentlehairremoval.com> domain name. Complainant claims it has never permitted Respondent’s use of the GENTLE HAIR REMOVAL mark. Respondent does not claim to be known by the domain name. Thus, Respondent is not commonly known as this domain name within the context of Policy ¶ 4(c)(ii). See 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).
Complainant further alleges that Respondent has failed to show a bona fide offering of goods through the <gentlehairremoval.com> domain name. Complainant further explains the domain name has been inactively held for about a decade. See Compl., at Attached Ex. 7. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that Respondent has failed to submit proof sufficient to establish bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
Respondent asserts that its <gentlehairremoval.com> domain name plainly predates Complainant’s trademark. Respondent registered the domain name about eight and a half years before Complainant made any use of the GENTLE HAIR REMOVAL mark. Respondent claims that Complainant’s other trademarks are collateral and irrelevant to this proceeding as this domain name is not confusingly similar to any of those other marks, nor does Complainant allege as such. Respondent claims it is impossible for Respondent to have registered this domain name in bad faith given the lengthy predating period. The domain name was registered in 2004, and Complainant alleges using the implicated mark no sooner than 2012, there is insufficient basis for finding the requisite bad faith registration under Policy ¶ 4(a)(iii). See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
It is possible to establish bad faith registration of a domain that predates a valid trademark registration, however, Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith); Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)). Under the circumstances, Complainant has failed to establish that Respondent registered or used the <gentlehairremoval.com> domain name in a manner that would constitute bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <gentlehairremoval.com> domain name REMAIN WITH Respondent.
__________________________________________________________________
David P. Miranda, Esq., Panelist
Dated: July 3, 2014
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