Dermalogica, Inc. and The International Dermal Institute, Inc. v. Paradigm Group
Claim Number: FA0612000874392
Complainant is Dermalogica, Inc. and The International Dermal
Institute, Inc. (“Complainant”), represented
by David J. Steele, of Christie, Parker & Hale, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dermalogicadirectonline.com>, registered with Wild West Domains, 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
On
On December 22, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 11, 2007 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@dermalogicadirectonline.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 has been using its DERMALOGICA mark to promote the sale of its skin care products for 20 years.
Complainant holds a trademark with the United States Patent and Trademark Office (“USPTO”) for its DERMALOGICA mark (Reg. No. 1,539,948, issued May 23, 1989).
Complainant has also registered the domain name <dermalogica.com>, which leads to a website containing information about Complainant’s products and business locations.
Respondent, Paradigm Group, registered the <dermalogicadirectonline.com> domain
name on
Respondent uses the disputed domain name to display hyperlinks which route Internet users to the websites of Complainant’s competitors.
Respondent’s <dermalogicadirectonline.com> domain name is confusingly similar to Complainant’s DERMALOGICA mark.
Respondent does not have any rights or legitimate interests in the domain name <dermalogicadirectonline.com>.
Respondent registered and uses the <dermalogicadirectonline.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 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:
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.
Under the Policy, registration of a mark with an appropriate
governmental authority confers rights in that mark to a registrant. Thus Complainant has established rights in
the DERMALOGICA mark pursuant to Policy ¶ 4(a)(i). See Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO
Respondent’s <dermalogicadirectonline.com> domain name uses Complainant’s DERMALOGICA mark in its entirety and merely adds the generic terms “direct” and “online.” The addition of such generic terms, as well as the generic top-level domain “.com,” does not avoid a finding of confusing similarity under Policy ¶ 4(a)(i). Therefore, we conclude that Respondent’s <dermalogicadirectonline.com> domain name is confusingly similar to Complainant’s DERMALOGICA mark pursuant to Policy ¶ 4(a)(i). See Gen. Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term “direct” to a complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by that complainant, so that a respondent’s domain names was confusingly similar); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding that the domain <broadcomonline.com> is confusingly similar to a complainant’s BROADCOM mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that a top level domain name such as “.net” or “.com” does not affect the domain for purposes of determining whether it is identical or confusingly similar to a competing mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <dermalogicadirectonline.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because of Respondent’s failure to respond to the Complaint, the Panel is entitled to assume that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where a complainant asserts that a respondent does not have 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO, Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest does exist). However, the Panel will nonetheless examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests under Policy ¶ 4(c).
We first note that Complainant alleges that Respondent has
never been commonly known by the <dermalogicadirectonline.com>
domain name. The WHOIS information
identifies Respondent as “Paradigm Group,” and we can find no other evidence in
the record suggesting that Respondent is commonly known by the name. Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Yi,
FA 139720 (Nat. Arb. Forum
In addition, it is undisputed on the record before us that Respondent
is using the <dermalogicadirectonline.com>
domain name to display a list of hyperlinks which route Internet users to the
websites of Complainant’s competitors, presumably to generate referral fees for
each misdirected Internet user. Thus Respondent
is using Complainant’s DERMALOGICA mark for its own commercial benefit, and
such use constitutes neither a bona fide
offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary
use of a complainant’s marks to send Internet users to a website which
displayed links, some of which linked to a complainant’s competitors, was not a
bona fide offering of goods or services); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum
Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s undenied use of the <dermalogicadirectonline.com> domain name, which is confusingly similar to Complainant’s DERMALOGICA mark, is likely to cause confusion among customers searching for Complainant’s products. Specifically, customers could become confused as to the possible affiliation, endorsement, or sponsorship of competitors’ products. This use of the disputed domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that a respondent ran afoul of Policy ¶ 4(b)(iv) by displaying a complainant’s mark on its website and offering services identical to those offered by that complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where a respondent's use of a domain name at issue to resolve to a website where similar services were offered to Internet users was likely to confuse users into believing that a complainant was the source of or was sponsoring the services offered at the site).
Finally, it appears that Respondent registered the contested
domain name with either actual or constructive
knowledge of Complainant’s rights in the DERMALOGICA mark by virtue of Complainant’s prior registration of that
mark with the USPTO. Registration and
use of a confusingly similar domain name despite such actual or constructive
knowledge evidences bad faith registration and use of the domain name pursuant
to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum
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 <dermalogicadirectonline.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 30, 2007
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