LIFE CELL I.P. HOLDINGS, LLC and SOUTH BEACH SKIN CARE, INC. v. Nam Nguyen / MarNET
Claim Number: FA1407001571873
Complainant is LIFE CELL I.P. HOLDINGS, LLC and SOUTH BEACH SKIN CARE, INC. (“Complainant”), represented by Darren Spielman of Kain & Associates, Attorneys at Law, P.A., Florida, USA. Respondent is Nam Nguyen / MarNET (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lifecellbeauty.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 28, 2014; the National Arbitration Forum received payment on July 28, 2014.
On July 30, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <lifecellbeauty.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 August 1, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 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@lifecellbeauty.com. Also on August 1, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 27, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
a. Policy ¶ 4(a)(i)
i. Complainant, LIFECELL I.P. HOLDINGS, LLC and SOUTH BEACH SKIN CARE, INC., has used the LIFECELL mark in commerce since 2006 in connection with the sale of skin and beauty products.
ii. Complainant has a valid registration with the United States Patent and Trademark Office (“USPTO”) for the LIFECELL mark (Reg. No. 4,447,596, registered December 10, 2013).
iii. The disputed domain name is confusingly similar to the mark in which Complainant has rights.
b. Policy ¶ 4(a)(ii)
i. Respondent is not commonly known by the disputed domain name.
ii. Respondent uses the disputed domain name in an attempt to pass itself off as Complainant. Respondent copied Complainant’s website and is offering for sale products identical to those sold by Complainant.
c. Policy ¶ 4(a)(iii)
i. Respondent’s use of the disputed domain name is disrupting the business of Complainant.
ii. Respondent is using the disputed domain name for commercial gain through reliance on mistake or confusion by attempting to pass itself off as Complainant by copying nearly every aspect of Complainant’s website.
iii. Respondent has engaged in a phishing scheme to procure Internet users’ sensitive information.
iv. Respondent had actual or constructive knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Prior panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. The Panel here finds the evidence presented in the pleadings establishes a sufficient nexus/link between the Complainants, and thus treats them as a single entity in this proceeding.
Complainant is LIFE CELL I.P. HOLDINGS, LLC and SOUTH BEACH SKIN CARE, INC. of Florida, USA. Complainant is the owner of domestic registrations for the mark LIFECELL which is has continuously used since at least 2013 in connection with innovative skin care products and services.
Respondent is Nam Nguyen Tien / MarNET, of Hanoi, Vietnam. Respondent’s registrar’s address is listed as Kirkland, WA, USA. Respondent registered the disputed domain name on or about April 1, 2014.
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(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.”).
Complainant alleges that it has been using the LIFECELL mark in commerce since 2006 in connection with the sale of skin and beauty products. Complainant asserts that it has a valid registration with the USPTO for the LIFECELL mark (Reg. No. 4,447,596, registered December 10, 2013). The Panel notes that although Respondent resides in Vietnam, it is irrelevant under Policy ¶ 4(a)(i) as Complainant need not register its mark in the country where Respondent operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds that Complainant’s registration of the LIFECELL mark with the USPTO shows that it has rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that the disputed domain name is confusingly similar to the mark in which Complainant has rights. The Panel notes that the disputed domain name <lifecellbeauty.com> encompasses the entirety of Complainant’s LIFECELL mark with the addition of the descriptive term “beauty” and the addition of the generic top-level domain name (“gTLD”) “.com”. The Panel further notes that the addition of a descriptive term and a gTLD does not adequately distinguish the disputed domain name from Complainant’s mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel here finds that the disputed domain name is confusingly similar to the mark in which Complainant has rights pursuant to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant argues that Respondent is not commonly known by the disputed domain name. The Panel notes that the registrant of the disputed domain name is listed as “Nam Nguyen”. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) the panel found that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute. At present, the situation is comparable because the only information available to the Panel is that listed in the WHOIS due to Respondent’s default. The Panel here finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant urges that Respondent is attempting to pass itself off as Complainant by copying Complainant’s website and offering for sale products identical to those sold by Complainant. The Panel notes that the disputed domain name resolves to a webpage designed to look identical to Complainant’s website, including multiple placements of Complainant’s LIFECELL trademark and logo. The Panel further notes that Respondent’s website offers products for sale that are identical to the products sold by Complainant. The Panel finds that Respondent is not using the disputed domain name for 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 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 also claims Respondent’s operation of a phishing scheme through the <lifecellbeauty.com> domain name evidences a lack of rights and legitimate interests in this domain name. The Panel notes that the resolving page prompts users to fill out a “Get Free Trial Now” section, which request personal and financial information. The Panel finds that Respondent’s efforts at acquiring the personal information of individuals seeking Complainant’s services on the Internet is indicative of a phishing scheme. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel here finds that Respondent lacks Policy ¶ 4(a)(ii) rights and legitimate interests with respect to the disputed domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent’s use of the disputed domain name is disrupting the business of Complainant. Complainant alleges that Respondent is using the disputed domain name to redirect potential Complainant customers away from Complainant’s website and to the disputed domain name thus interfering with Complainant’s business. Because Respondent is using the disputed domain name to redirect potential customers away from Complainant’s website and towards the disputed domain name use in competition with Complainant’s products, the Panel finds that Respondent is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
Complainant asserts that Respondent is using the disputed domain name for commercial gain through reliance on consumers mistake or confusion by attempting to pass itself off as Complainant. The Panel again notes that the disputed domain name resolves to a webpage that is designed to appear identical to Complainant’s own website, and that Respondent’s webpage displays Complainant’s LIFECELL mark and sells products identical to those sold on Complainant’s own website. The Panel finds that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and that Respondent likely profits from the resulting confusion. The Panel finds Respondent’s actions evidence bad faith under Policy ¶ 4(b)(iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <lifecellbeauty.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 10, 2014
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