Ms. Laura Mercier and Gurwitch Products, L.L.C. v. Titan Net a/k/a Titan
Claim Number: FA0602000649531
Complainants are Ms. Laura Mercier and Gurwitch Products, L.L.C. (collectively, “Complainant”), represented by David J. Steele, of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000, Newport Beach, CA 92660. Respondent is Titan Net a/k/a Titan (“Respondent”), Net, Kenyatta Ave., P.O. Box 4276-30100, Eldoret 30100, KE.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lauramerciercosmetics.org>, registered with Intercosmos Media Group Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 22, 2006.
On February 22, 2006, Intercosmos Media Group Inc. confirmed by e-mail to the National Arbitration Forum that the <lauramerciercosmetics.org> domain name is registered with Intercosmos Media Group Inc. and that Respondent is the current registrant of the name. Intercosmos Media Group Inc. has verified that Respondent is bound by the Intercosmos Media Group 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 February 23, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 15, 2006 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@lauramerciercosmetics.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 22, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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." 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 <lauramerciercosmetics.org> domain name is confusingly similar to Complainant’s LAURA MERCIER mark.
2. Respondent does not have any rights or legitimate interests in the <lauramerciercosmetics.org> domain name.
3. Respondent registered and used the <lauramerciercosmetics.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ms. Laura Mercier and Gurwitch Products, has
continuously and extensively used the LAURA MERCIER mark in connection with its
high-end cosmetics products since 1996.
Complainant annually earns approximately $100 million in revenue, and it
sells its products in over 400 stores in more than twenty-one countries around
the world.
Complainant has registered the LAURA MERCIER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,350,939 issued May 16, 2000; Reg. No. 2,446,387 issued April 24, 2001 ; Reg. No. 2,750,756 issued August 12, 2003). Complainant has also registered the mark in other countries, including Australia (Reg. No. 807,864 issued November 1, 2000), Canada (Reg. No. TMA616635 issued August 12, 2004), and Japan (Reg. No. 4,122,277 issued March 6, 1998).
Respondent registered the <lauramerciercosmetics.org> domain name on January 25, 2006. Respondent is using the disputed domain name to operate an Internet directory displaying links to Complainant’s direct competitors and to unrelated content.
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 has established rights to the LAURA MERCIER mark by registering the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <lauramerciercosmetics.org> domain
name is confusingly similar to Complainant’s LAURA MERCIER mark because the
domain name contains the entire mark and merely adds the generic term
“cosmetics,” which describes Complainant’s business activity, and the generic
top-level domain “.org.” Panels have
held that the additions of a generic term and a generic top-level domain to a
complainant’s mark do not sufficiently distinguish a respondent’s domain name
from a mark. See Parfums Christian
Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four
domain names that added the descriptive words "fashion" or
"cosmetics" after the trademark were confusingly similar to the
trademark); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution
Sept. 22, 2000) (finding confusing similarity where the respondent’s domain
name combines the complainant’s mark with a generic term that has an obvious
relationship to the complainant’s business); see also Koninklijke Philips
Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the
domain name <philips.org> is identical to the complainant’s PHILIPS
mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and
legitimate interests in the <lauramerciercosmetics.org> domain
name. Complainant must first make a prima
facie case in support of its allegations, and then the burden shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See G.D. Searle
v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because
Complainant’s Submission constitutes a prima facie case under the
Policy, the burden effectively shifts to Respondent. Respondent’s failure to
respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has
asserted that the respondent has no rights or legitimate interests with respect
to the domain name, it is incumbent on the respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <lauramerciercosmetics.org>
domain name. See Am. Online, Inc. v.
AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate
interests where the respondent fails to respond); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”).
However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Titan
Net,” and there is no other evidence in the record suggesting that Respondent
is commonly known by the <lauramerciercosmetics.org> domain
name. Thus, Respondent has not
established rights or legitimate interests in the <lauramerciercosmetics.org>
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); 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.”).
In addition, Respondent’s <lauramerciercosmetics.org>
domain name, which includes Complainant’s LAURA MERCIER mark, resolves to a web
directory containing links to Complainant’s direct competitors and to other
content. In Golden Bear Int’l, Inc.
v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003), the respondent
registered the <nicklausgolf.com> domain name, which included the
complainant’s NICKLAUS mark, and used it to operate a search engine displaying
links to third-party websites. The
panel held that the respondent’s diversion of Internet users to websites
unrelated to the complainant’s mark for the respondent’s own commercial gain
did not represent 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). Because Respondent is also
diverting Internet users seeking Complainant’s products to a search engine
containing links to third-party websites and is likely receiving click-through
fees for each Internet user it diverts, Respondent’s use of the disputed domain
name for its own commercial gain provides evidence that it lacks rights and
legitimate interests in the <lauramerciercosmetics.org> domain
name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Luck's Music
Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000)
(finding that the respondent engaged in bad faith use and registration by using
domain names that were identical or confusingly similar to the complainant’s
mark to redirect users to a website that offered services similar to those
offered by the complainant).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <lauramerciercosmetics.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because the disputed domain name resolves to a web directory featuring links to a variety of content, including Complainant’s direct competitors. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the respondent registered the <mailonsunday.com> domain name, which included the complainant’s THE MAIL ON SUNDAY mark, and was using the domain name to provide links to competing newspapers and to third-party websites. The panel held that such use provided evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent “presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’” In this case, Respondent also likely receives referral fees for each consumer it diverts to other websites and is, therefore, taking advantage of the confusing similarity between the disputed domain name and Complainant’s mark. Such use of the disputed domain name to profit off of the goodwill associated with Complainant’s mark is indicative of bad faith registration and use under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lauramerciercosmetics.org> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: April 4, 2006
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