LIFE CELL I.P. HOLDINGS, LLC and SOUTH BEACH SKIN CARE, INC. v. Nam Nguyen Tien / MarNET
Claim Number: FA1407001571875
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 Tien / MarNET (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lifecellbeauty.org>, registered with eNom, Inc.
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 August 1, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <lifecellbeauty.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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.org. 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
1. Complainant has rights in the LIFECELL mark under Policy ¶ 4(a)(i).
i. Complainant provides skin care products and services to its clientele.
ii. Complainant owns registrations for its LIFECELL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,447,596 registered December 10, 2013).
2. Respondent’s <lifecellbeauty.org> domain name is confusingly similar to Complainant’s LIFECELL mark.
i. Respondent’s disputed domain name contains Complainant’s entire mark and adds the word “beauty” and the generic top-level domain (“gTLD”) “.org.”
3. Respondent has no rights or legitimate interests in the <lifecellbeauty.org> domain name.
i. Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists “Na Nguyen Tien/Marnet” as registrant.
4.Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
i. Respondent’s resolving website intentionally imitates Complainant’s genuine website in substantially all respects, including using Complainant’s marks and logos.
ii. Respondent altered the “Privacy Policy” and “Contact Us” options to direct Internet users to an unauthorized e-mail for questions and support, as well as to solicit personal information from Internet users. See Complainant’s Annex B.
5.Respondent registered and is using the <lifecellbeauty.org> domain name in bad faith.
i. Respondent registered and is using the disputed domain name with the intent of disrupting Complainant’s business.
ii. Respondent uses the disputed domain name to attract Internet users to its website and other online locations, by creating a strong likelihood of confusion with Complainant’s mark. Respondent offers goods in direct competition with Complainant.
iii. Respondent’s website is also a fraudulent counterfeit imitation of complainant’s official site. Respondent thus attempts to pass itself off as complainant for commercial profit.
iv. Respondent replicates Complainant’s official website with the intent of confusing Internet users and asking them to provide personal and financial information for a fraudulent scheme.
v. Respondent had knowledge of Complainant’s rights in the LIFECELL mark prior to registering the disputed domain name.
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 May 22, 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 claims that it has rights in the LIFECELL mark under Policy ¶ 4(a)(i). Complainant states that it provides superior quality beauty products and services to its clientele. Complainant provides evidence that it owns registrations for its LIFECELL mark with the USPTO (Reg. No. 4,447,596 registered December 10, 2013). Prior panels have concluded that regardless of where respondent is located, a registration with the USPTO is sufficient to establish rights in a given mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel here finds that Complainant has rights in the LIFECELL mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <lifecellbeauty.org> domain name is confusingly similar to Complainant’s LIFECELL mark. Complainant states that Respondent’s disputed domain name contains Complainant’s entire mark and adds the word “beauty” and the gTLD “.org.” Prior panels have concluded that adding a descriptive term and a gTLD to a registered mark does not differentiate it from the mark. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel here finds that Respondent’s <lifecellbeauty.org> domain name is confusingly similar to Complainant’s LIFECELL mark under 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 contends that Respondent has no rights or legitimate interests in the <lifecellbeauty.org> domain name under Policy ¶ 4(c)(iii). Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name lists “Na Nguyen Tien/Marnet” as registrant. Given Respondent’s failure to refute Complainant’s contentions, the Panel finds that Respondent is not commonly known by the <lifecellbeauty.org> domain name for purposes of Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant next asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <lifecellbeauty.org> domain name. Complainant argues that Respondent’s resolving website intentionally imitates Complainant’s genuine website in substantially all respects, including using Complainant’s marks and logos. The Panel notes that Complainant’s official website and Respondent’s resolving website are nearly identical. Complainant urges that Respondent’s prominent use of Complainant’s trademarks is calculated and likely to lead visitors to believe that Respondent’s site originates with or is endorsed by Complainant site, thereby constituting passing off. In Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006), the panel found that 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. The Panel here finds that Respondent has attempted to pass itself off as Complainant online and thus fails to make a bona fide offering of goods or services and further fails to exhibit a legitimate noncommercial or fair use of the disputed domain name.
Additionally, Complainant states that Respondent altered the “Privacy Policy” and “Contact Us” options to direct Internet users to an unauthorized e-mail for questions and support, as well to solicit personal information from Internet users. The Panel notes that Respondent’s resolving website features links to the “Privacy policy,” “Terms and Conditions” as well as “Contact us.” The Panel also notes that Respondent’s website features a “Get Free Trial Now” section where it requests an Internet users’ first name, last name, address, country, state, city, zip code, phone, and email address. Prior panels have found that using a domain name for the purpose of soliciting private information from internet users indicates 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’s use of the <lifecellbeauty.org> domain name to run a phishing scheme does not confer rights or legitimate interests upon Respondent because it is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the 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 alleges that Respondent registered and is using the <lifecellbeauty.org> domain name in bad faith under Policy ¶ 4(b)(ii). Complainant asserts that Respondent has a pattern of bad faith registrations, as indicated by a pending proceeding in NAF FA1571873. The Panel notes that a pattern of bad faith under Policy 4(b)(ii) is found only where there is an actual ruling against the respondent. See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Panel here finds that because Respondent’s additional UDRP claim is still pending a final decision Complainant’s Policy ¶ 4(b)(ii) argument is untimely.
Complainant next claims that Respondent registered and is using the disputed domain name with the intent to disrupt Complainant’s business. Complainant claims that Internet users searching for Complainant’s business are likely to go to the disputed domain name believing they are visiting Complainant’s official website. Complainant argues that this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). The Panel finds that Respondent is competing with Complainant by offering an identical website and products as Complainant, therefore Respondent’s registration of a confusingly similar domain name for this purpose constitutes bad faith within the meaning of Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends that Respondent uses the disputed domain name to attract Internet users to its website and other online locations, by creating a strong likelihood of confusion with Complainant’s mark under Policy ¶ 4(b)(iv). Complainant states that Respondent offers goods in direct competition with Complainant, as Respondent has merely copied Complainant’s official website. Complainant elaborates by asserting that Respondent’s website is a fraudulent counterfeit imitation of Complainant’s official site, and Respondent is thus attempting to pass itself off as Complainant for commercial profit. As Respondent has sought to create confusion with Complainant or pass itself off as Complainant in order to generate commercial profit, the Panel finds that Respondent registered and uses the <lifecellbeauty.org> domain name in bad faith under Policy ¶ 4(b)(iv). See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
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.org> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 10, 2014
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