Dermalogica-directory.com

The timeline behind dermalogica-directory.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Dermalogica, Inc. and The International Dermal Institute, Inc. v. Pimpa Subsomboon Claim Number: FA0503000448935 PARTIES Complainants Dermalogica, Inc. and The International Dermal Institute, Inc. (“Complainant”), are represented by David J. Steele, of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000 Newport Beach, CA 92660. Respondent is Pimpa Subsomboon (“Respondent”), 33/548 Soi Chokchai4, Ladprao, Bangkok 10230, Thailand. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <dermalogica-directory.com>, registered with Go Daddy Software, Inc. PANEL 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. John J. Upchurch as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 28, 2005; the National Arbitration Forum received a hard copy of the Complaint on March 29, 2005. On March 30, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <dermalogica-directory.com> 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 March 30, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 19, 2005 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@dermalogica-directory.com by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On April 26, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <dermalogica-directory.com> domain name is confusingly similar to Complainant’s DERMALOGICA mark. 2. Respondent does not have any rights or legitimate interests in the <dermalogica-directory.com> domain name. 3. Respondent registered and used the <dermalogica-directory.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant Dermalogica, Inc. was co-founded in Los Angeles in 1986 by the founder of The International Dermal Institute. All DERMALOGICA products are researched and developed by The International Dermal Institute. The International Dermal Institute, Inc., has licensed its DERMALOGICA mark to Dermalogica, (collectively “Complainant”). Complainant has used the DERMALOGICA mark in commerce in the United States and around the world since as early as 1986 in connection with a wide range of innovative skin care products. Complainant owns trademark rights to the DERMALOGICA mark through registration with the United States Patent and Trademark Office (Reg. No. 1,539,948, issued May 23, 1989). Complainant also owns trademark registration rights in the DERMALOGICA mark in numerous countries such as Thailand, Argentina, Bulgaria, Cyprus, Singapore, Malaysia, Lebanon and Mexico. Complainant operates an extensive website at the <dermalogica.com> domain which provides a wealth of information regarding its DERMALOGICA products, locations and contact information for one of the thousands of skin care professionals offering Complainant’s products, general skin care information and information about Dermalogica, Inc. Respondent registered the disputed domain name on March 8, 2005. Respondent is using the domain name to redirect Internet users to its commercial website where advertisements and an Internet directory containing links to skin care products similar to those offered by Complainant are offered. DISCUSSION 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. 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. Identical and/or Confusingly Similar Complainant has established that it has rights in the DERMALOGICA mark through registration with the United States Patent and Trademark Office and through continuous use of its mark in commerce for the last nineteen years. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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 has the burden of refuting this assumption). The <dermalogica-directory.com> domain name registered by Respondent is confusingly similar to Complainant’s DERMALOGICA mark because the domain name incorporates Complainant’s DERMALOGICA mark in its entirety and deviates from it with the addition of the hyphen and the generic or descriptive phrase “directory.” Neither the mere addition of a hyphen nor the addition of a generic or descriptive word to a registered mark negates the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that a hyphen between words of Complainant’s registered mark is confusingly similar); see also InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to Complainant’s marks and likely to mislead Internet users into believing that products and services offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered). Moreover, the addition of the generic top-level domain “.com” is irrelevant in determining whether the disputed domain names are confusingly similar to Complainant’s DERMALOGICA mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); 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) was satisfied). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and 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 Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on 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 certain circumstances the mere assertion by Complainant that Respondent has no rights or legitimate interests is sufficient to shift the burden of proof to Respondent to demonstrate that such rights or legitimate interests do exist); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interests in the domain names). Moreover, the Panel may accept all reasonable allegations and inferences in the Complaint as true because Respondent has not submitted a response. See 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.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the Complaint to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence). Respondent is using the <dermalogica-directory.com> domain name to redirect Internet users to a commercial website that features advertising and an Internet directory containing links to skin care products similar to those offered by Complainant. In the absence of a response, the Panel is assuming that Respondent receives click-through fees by redirecting Internet users to third party websites through the use of the disputed domain name. Respondent’s use of a domain name that is confusingly similar to Complainant’s DERMALOGICA mark to redirect Internet users interested in Complainant’s products to a search engine website that offers links to competing websites is not a use in connection with 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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of a web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business.”); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name). Furthermore, Respondent is not commonly known by the disputed domain name, and does not have Complainant’s authorization to use Complainant’s DERMALOGICA mark. Respondent has not presented any evidence and there is no proof in the record suggesting that Respondent is commonly known by the disputed domain name. Therefore, Respondent has not established rights or legitimate interests in the disputed domain name 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 interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent is incorporating Complainant’s mark in its domain name to lead Internet users to a website that offers similar skin care-related products. The Panel finds that Respondent is intentionally creating a likelihood of confusion with Complainant’s mark to attract Internet users to Respondent’s website for Respondent’s commercial gain, pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks). Furthermore, Respondent registered the confusingly similar domain name for the purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s search engine website, where links to skin care companies offering similar goods are displayed. Registration of a domain name confusingly similar to Complainant’s mark for the purpose of disrupting Complainant’s business is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business). Moreover, Respondent intentionally registered a domain name that is likely to confuse Internet users and cause them to believe any site hosted at the domain name would be affiliated with or endorsed by Complainant. This demonstrates bad faith under the Policy. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is "inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant"); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the "domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests 'opportunistic bad faith'"). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <dermalogica-directory.com> domain name be TRANSFERRED from Respondent to Complainant. John J. Upchurch, Panelist Dated: May 16, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.