Dermalogica, Inc., and The International Dermal Institute, Inc. v. Bamab Inc.
Claim Number: FA0605000719562
Complainants are Dermalogica, Inc. and The International Dermal Institute, Inc. (collectively “Complainant”), represented by David J. Steele, of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000, Newport Beach, CA 92660. Respondent is Bamab Inc. (“Respondent”), Private, Beverly Hills, CA 90212.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dermalogicaonline.com>, registered with Go Daddy Software, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 30, 2006.
On May 31, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <dermalogicaonline.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 June 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 28, 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@dermalogicaonline.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 30, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant The International Dermal Institute, Inc., owns the DERMALOGICA mark, which it licenses to Complainant Dermalogica Inc (collectively “Complainant”).
Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the DERMALOGICA mark (Reg. No. 1,539,948, issued as of May 23, 1989).
Complainant has used the DERMALOGICA mark in connection with high quality skin care goods and services since 1989.
The DERMALOGICA mark is used by Complainant in connection with both The International Dermal Institute, which is a training facility for professional skin care therapists, as well as a research and development center for the creation of the products sold in connection with the DERMALOGICA mark.
Complainant has registered the <dermalogica.com> domain name, which resolves to a website used by Complainant to offer goods and services to Internet users under the DERMALOGICA mark.
Respondent registered the disputed domain name <dermalogicaonline.com> on November 9, 2005.
Respondent filed this registration despite being a party to an Authorized Account Agreement with Complainant including a Website Policy specifically prohibiting Respondent from registering a domain name including the DERMALOGICA mark without prior written permission of Complainant.
Complainant did not give Respondent such written permission.
Respondent is using the <dermalogicaonline.com> website to redirect Internet users to its website offering for sale both Complainant’s goods and services, and other goods and services in direct competition with those of Complainant.
Respondent’s <dermalogicaonline.com> domain name is confusingly similar to Complainant’s DERMALOGICA mark.
Respondent does not have any rights or legitimate interests in the domain name <dermalogicaonline.com>.
Respondent registered and is using the <dermalogicaonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in its DERMALOGICA mark through its registration with the USPTO. Such registration of a mark establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002):
Panel decisions have held that registration of a mark is prima facie
evidence of validity, which creates a rebuttable presumption that the mark is
inherently distinctive.
Respondent’s <dermalogicaonline.com> domain name is confusingly similar to Complainant’s DERMALOGICA mark. The disputed domain name includes the DERMALOGICA mark in its entirety and merely adds the term “online” and the top-level domain “.com.” Such additions do not overcome the confusing similarity between Respondent’s domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001):
[T]he
fact that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity or
confusing similarity for purposes of the Policy despite the addition of other
words to such marks.
See also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to a complainant’s BROADCOM mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the <dermalogicaonline.com> domain name. Complainant’s assertion is sufficient to create a prima facie case and to shift the burden to the Respondent to demonstrate that Respondent does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Respondent’s failure to file a Response may be taken as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. 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 a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002). Nonetheless, the Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant asserts, without contradiction from Respondent, that Respondent is using the <dermalogicaonline.com> domain name to redirect Internet users to Respondent’s website which features both Complainant’s goods and services and those of its competitors. Complainant also alleges, and Respondent does not deny, that Respondent’s website is operating in violation of a license agreement between the parties. Respondent’s use of a domain name that is confusingly similar to Complainant’s DERMALOGICA mark to redirect Internet users to Respondent’s competing website is neither a bona fide offering of goods or services pursuant to Policy ¶ (4)(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where a respondent used a complainant’s mark without authorization to attract Internet users to its website, which offered both that complainant’s products and those of its competitors); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell a complainant’s goods, as well as others’ goods, without its authority is not bona fide use); see also Toyota Jidosha Kabushiki Kaisha t/a Toyota Motor Corp. v. Double Time Jazz, FA 113316 (Nat. Arb. Forum July 10, 2002):
Respondent
cannot use Complainant’s trademark in a domain name when the Respondent, even
though selling Complainant’s goods, has no permission to use the trademark as
the domain name.
Further, there is no evidence in the record of this
proceeding indicating that Respondent is commonly known by the <dermalogicaonline.com>
domain name. By the same token,
Complainant asserts that Respondent is not licensed to use Complainant’s
DERMALOGICA mark in a domain name. In
addition, Respondent’s WHOIS information fails to identify Respondent, as
Respondent registered the disputed domain name using a privacy service, Domains
by Proxy, Inc. Lacking any evidence to
the contrary, the Panel concludes that Respondent is not commonly known by the <dermalogicaonline.com>
mark and, thus lacks rights or legitimate interests pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where a respondent was not commonly known by a
competing mark and never applied for a license or permission from a complainant
to use the trademarked name); see
also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating that “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
It is undisputed that Respondent knew of Complainant’s rights in the DEMALOGICA mark by virtue of Respondent’s Authorized Account Agreement with Complainant. While this agreement authorizes Respondent’s sale of goods and services bearing the DERMOLOGICA mark, it prohibits use of the DERMOLOGICA mark in a domain name. Respondent nonetheless registered the <dermalogicaonline.com> domain name.
Registration of a domain name in such circumstances is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Heel Quik! Inc. v. Goldman, FA 92527 (Nat. Arb. Forum Mar. 1, 2000) (holding that registration of a domain name in violation of a license agreement is evidence that the domain name was registered and used in bad faith); see also IndyMac Bank, F.S.B. v. Kato, FA 190366 (Nat. Arb. Forum Oct. 6, 2003):
Registration of a domain name in violation of a license agreement
between the Complainant and Respondent that states that no use of the trademark
is permissible without authorization . . . is evidence of bad faith
registration.
See also Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb Forum May 23, 2003) (finding that a respondent’s actual knowledge of a complainant’s rights in the ULTRAGUARD mark, inferred from the fact that that respondent was a distributor of the complainant, evidenced that the disputed domain name was registered in bad faith).
In addition, it is not contested
that Respondent’s <dermalogicaonline.com> domain name is
confusingly similar to Complainant’s DERMALOGICA mark. This confusing similarity may mislead
Internet users into believing that Respondent’s website is sponsored by
Complainant. Respondent exploits this
confusion by attracting Internet users to its website, where Complainants goods
and services are offered for sale alongside competing goods and services. The Panel concludes that such use is
evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding
that a respondent’s use of the <saflock.com> domain name to offer goods
competing with a complainant’s illustrates that respondent’s bad faith
registration and use of the domain name pursuant to Policy ¶ 4(b)(iv)); see
also Nokia Corp. v. Private,
D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant
to Policy ¶ 4(b)(iv) where a domain name resolved to a website that offered
similar products to those sold under a complainant’s famous mark); see also Whirlpool Props., Inc. v. Ace Appliance Parts & Serv., FA 109386 (Nat. Arb. Forum May 24, 2002) (holding that a
respondent’s use of the <whirlpoolparts.com> domain name to operate a
website selling a complainant’s products constituted bad faith registration and
use under the Policy, despite the fact that that respondent operated a
storefront business for 27 years selling the complainant’s parts and
appliances).
For these reasons, the Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <dermalogicaonline.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 10, 2006
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