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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Complexions Rx, Inc. v. Julie Hogan
Case No. D2002-0484
1. The Parties
The Complainant is Complexions Rx, Inc., a Delaware corporation having its principal place of business at 4180 La Jolla Village Drive, La Jolla, California 92037, United States of America (hereinafter "the Complainant").
The Respondent is Julie Hogan, whose address is 7186 Copperfield Circle SE, Lake Worth, Florida 33467, United States of America (hereinafter "the Respondent").
2. The Domain Name and Registrar
The domain name at issue in this proceeding is <complexionrx.com>.
The Registrar is CORE Internet Council of Registrars.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the ICANN Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999.
The Complainant submitted its Complaint, dated March 23, 2002, to the WIPO Arbitration and Mediation Center ("the Center") by e-mail and in hard copy. The Complaint was received by e-mail on the same date and in hard copy on March 28, 2002.
On March 27, 2002, the Center requested verification of registration from CORE Internet Council of Registrars. Verification was received on March 28, 2002.
On March 28, 2002, by way of a Complaint Deficiency Notification, the Center notified the Complainant that its Complaint did not comply with the following requirements of the ICANN Rules: (1) the correct Registrar, CORE Internet Council of Registrars, was not properly identified in the Complaint; and (2) CORE Internet Council of Registrars did not receive a copy of the Complaint.
The Complainant submitted its Amended Complaint, dated May 29, 2002, to the Center by e-mail and in hard copy. The Amended Complaint was received by e-mail on the same date and in hard copy on June 3, 2002. On June 3, 2002, the Center completed a Formal Requirements Compliance Checklist, confirming that all the formal requirements had been met.
On June 4, 2002, the Center notified the Respondent of the Amended Complaint, informing her, inter alia, that the deadline for submitting a Response was June 24, 2002. The Respondent did not file a Response by that date, and on July 1, 2002, the Center issued a Notification of Respondent Default.
The Amended Complaint was properly notified to the Respondent in accordance with Paragraph 2(a) of the ICANN Rules. Furthermore, the Registrar has confirmed that <complexionrx.com> was registered through CORE Internet Council of Registrars and that the current registrant of the domain name is the Respondent, Julie Hogan.
The Center appointed D. Brian King as Sole Panelist by Notification of July 5, 2002, and the undersigned Sole Panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received after the appointment of the Sole Panelist.
4. Factual Background
The facts relevant to the current matter are set out in the Amended Complaint. Considering the evidence attached thereto and the fact that the Respondent has not filed a Response contesting the Complainant’s allegations, the Panel finds the following facts to have been established.
The Complainant is in the business of selling cosmetic and skin care products and services (see Complainant’s exhibit 6). The Complainant holds two U.S. trademark registrations for "Complexions RX," as reflected in the Principal Register of the United States Patent and Trademark Office (USPTO). The Complainant first registered its mark in September 2000 (see Complainant’s exhibit 3). The mark is used in connection with a number of cosmetic and skin care related products and services. The Complainant also owns the domain name <complexionsrx.com>, registered on August 11, 1998 (see Complainant’s exhibit 4).
The contested domain name, <complexionrx.com>, was registered on June 27, 2001, by the Respondent (see Complainant’s exhibit 1). It resolves to an active website being used for the purpose of selling cosmetic and skin care products substantially the same as those offered by the Complainant (see Complainant’s exhibit 5).
The Complainant’s trademark is almost completely incorporated by the disputed domain name, except for the use of the singular "complexion," instead of "complexions," and the addition of the generic suffix ".com." This trademark was registered by the Complainant approximately nine months prior to the Respondent’s registration of the disputed domain name. Furthermore, the Complainant registered its own domain name, <complexionsrx.com>, nearly three years prior to the registration of the disputed domain name.
On March 7, 2002, the Complainant’s attorney sent the Respondent a "cease and desist" letter in which the Complainant asserted its prior rights in the mark and attached evidence of its federal trademark registrations in the United States (see Complainant’s exhibit 7). On March 12, 2002, the Respondent replied to the Complainant’s letter by e-mail. The Respondent’s e-mail states as follows (Complainant’s exhibit 8):
In response to your letter dated March 7, 2002, we have [the] following comments.
We are 100% sure that a possible lawsuit as mentioned in your letter will be absolutely fruitless for your customer. Florida court systems are not supporting your ideas in any way. Obtaining a Florida attorney and filing suit etc… will be a waste of money.
We currently have the web site name and actual site for sale at a price of $125,000. Please tell your client that we will be happy to sell to them at that cost. A law suit will cost at least that, and since they will lose… at least this way they will gain something for having spent the money!:}
After being served with the Amended Complaint, the Respondent, Ms. Hogan, sent an e-mail to the Center on June 18, 2002. In that email, she wrote as follows: "We are supposed to respond to you, and wish to do so. Hopefully, we can do this via e-mail. Please advise." The Center replied by e-mail on the same day, referring the Respondent to the Center’s "Notification of Complaint and Commencement of Administrative Proceeding" dated June 4, 2002. The Respondent’s attention was specifically drawn to the section headed "9. Communications," which identifies the guidelines as to the requirements and form of the Response to be provided. The Respondent did not, however, submit any Response thereafter.
5. Parties’ Contentions
The Complainant relies on the above facts and contends, inter alia, that the three elements of Paragraph 4(a) of the Policy have been met.
The Complainant argues that the contested domain name is confusingly similar to the Complainant’s "Complexions RX" mark, in which the Respondent has no prior rights. The contested domain name is confusingly similar in appearance and phonetic pronunciation to the Complainant’s mark. Furthermore, the Respondent has used the domain name to offer products and services substantially similar to the products and services offered by the Complainant. The Respondent’s domain name features the singular form "complexion" of the dominant portion of the Complainant’s mark and domain name, i.e., "complexions". These circumstances lead, in the Complainant’s submission, to a likelihood of confusion by Internet users.
The Complainant further argues that the Respondent has no legitimate interests with respect to the contested domain name, since the domain name was registered after the Complainant had established rights in the "Complexions RX" mark through trademark registration, domain name registration and active use. In addition, the Complainant asserts that the Respondent is using the domain name for commercial purposes and is selling similar products and services to those of the Complainant and thereby misleadingly diverting customers seeking the Complainant’s wares. Furthermore, the Complainant contends that the Respondent had constructive notice of the Complainant’s rights in the mark as the mark was registered on the Principal Register of the USPTO prior to the time that the Respondent registered the disputed domain name. On these grounds, the Complainant contends that the Respondent can have no legitimate interests with respect to the use of the domain name.
Finally, the Complainant submits that the Respondent has registered and is using the domain name in bad faith. The Complainant bases its arguments on the following alleged grounds: (i) that the Respondent has registered and is using the domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark; (ii) that the Respondent’s intention in registering and using the domain name was to sell it to the Complainant for an amount in excess of out-of-pocket costs; (iii) that the Respondent’s primary purpose for registration and use was to disrupt the Complainant’s business by diverting customers who misspell the Complainant’s name to the Respondent, the Complainant’s competitor; (iv) that the Respondent has engaged in typo-piracy to confuse potential customers; (v) that the Respondent has intentionally registered and used a domain name that is almost phonetically identical to the Complainant’s domain name and mark; and (vi) that the Respondent has registered and used a domain name confusingly similar to the Complainant’s domain name while under constructive notice of the Complainant’s ownership of its mark.
The Respondent, as earlier noted, has not submitted a Response to the Complainant’s Amended Complaint, despite having been properly notified of it.
6. Discussion and Findings
Paragraph 4(a) of the ICANN Policy requires the Complainant to prove each of the following elements in order to obtain relief:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The 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.
Notwithstanding the Respondent’s default, the Complainant retains the ultimate burden of proof on each of these elements. They will be examined in turn below.
a. Identical or confusingly similar
The domain name at issue is confusingly similar to the Complainant’s registered trademark "Complexions RX" and its earlier-registered domain name, <complexionsrx.com>. The disputed domain name almost wholly incorporates the Complainant’s mark, the only difference being the omission of the plural "s" in the word "complexions." Previous Panels have held that "[e]ssential or virtual identity is sufficient for the purposes of the Policy," Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778 (October 1, 2001), at page 4, and that the addition of the plural "s" (or, in this Panel’s view, its omission) is an insignificant distinction that "do[es] not change the likelihood of confusion," Nokia Corporation v. Uday Lakhani, WIPO Case No. D2000-0833 (October 19, 2000), at page 5. In any event, where a domain name substantially incorporates the Complainant’s mark, that is sufficient to make the domain name "confusingly similar." See Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January 23, 2001), at pages 4 and 5; Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (September 18, 2000), at page 5. The fact that the Respondent is using the disputed domain name to sell products and services substantially identical to those marketed by the Complainant increases the likelihood of consumer confusion. Therefore, the Panel has no difficulty in concluding that the Complainant has met the first element under Paragraph 4(a).
b. Rights or legitimate interests of the Respondent
The Panel is also satisfied, on the evidence presented, that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Panel finds that none of the three circumstances identified in Paragraph 4(c) of the Policy as indicative of legitimate rights or interests is present here.
First, the Respondent cannot be said to be using the domain name in connection with a bona fide offering of goods or services. Although the Respondent is apparently selling products via the domain name, such use is not bona fide on the facts here. Prior to the time that she registered the disputed domain name, the Respondent had at least constructive notice of the Complainant’s rights in the mark "Complexion RX" (see below). The Respondent nonetheless proceeded to register a domain name confusingly similar to the Complainant’s mark, and to offer through that domain name goods virtually identical to those marketed by the Complainant corporation. In these circumstances, the Respondent’s commercial activities, using the domain name, cannot properly be characterized as bona fide.
Second, there is no evidence to suggest that the Respondent has "been commonly known" by the name at issue. The mere fact that the Respondent has registered the domain name <complexionrx.com> cannot be construed as creating rights or legitimate interests in the domain name, given that the Complainant’s use of its own mark pre-dates the Respondent’s registration of the contested domain name. Moreover, there is no evidence that the Respondent had been known as "Complexion RX" prior to the registration of the disputed domain name.
Finally, the <complexionrx.com> site is clearly being used for commercial purposes and hence does not meet the "non-commercial or fair use" criterion.
For the foregoing reasons, the Panel concludes that the second element under Paragraph 4(a) has been established in the present case.
c. Bad faith
Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location, or of a product or service on the website or location.
Paragraph 4(a)(iii) of the Policy requires that the domain name "has been registered and is being used in bad faith." This requirement is conjunctive, and therefore the Complainant must establish both bad faith registration and bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), at paragraphs 7.4 to 7.6.
For purposes of the Policy, a finding of any one of the four circumstances listed in Paragraph 4(b) will be sufficient to establish both registration and use in bad faith. Furthermore, those four circumstances are not exclusive, and other circumstances may likewise lead, in a particular case, to a finding of bad faith registration and use. See CCA Industries, Inc v. Bobby R. Dailey, WIPO Case No. D2000-0148 (April 26, 2000), at page 3.
In the present case, the Panel is persuaded that the circumstance identified in Paragraph 4(b)(iv) of the Policy has been adequately demonstrated by the Complainant. The Respondent is clearly using the disputed domain name for commercial gain. Furthermore, as already determined above, the disputed domain name is confusingly similar to the Complainant’s mark and could well lead internet users to believe that the Respondent’s web site is sponsored by or affiliated with the Complainant.
The determinative question, then, is whether it can be inferred that the Respondent has intentionally attempted to trade on the Complainant’s mark. The Panel concludes that such an inference properly arises on the evidence here. The Complainant registered its mark with the U.S. trademark authorities well prior to the Respondent’s registration of the disputed domain name. Under Section 22 of the United States Trademark Act, 15 U.S.C. § 1072, "[r]egistration of a mark on the principal register . . . shall be constructive notice of the registrant’s claim of ownership thereof." Thus the Respondent, who resides and operates in Florida, was on constructive notice of the Complainant’s rights in the name "Complexion RX" prior to registering the contested domain name. Indeed, the Respondent may have had actual notice as well, given the uniqueness of the Complainant’s mark and the fact that the Complainant’s website – offering substantially the same goods that the Respondent now offers via the contested domain name – was in operation long before the Respondent’s registration. In these circumstances, the Panel is persuaded that the Respondent has intentionally attempted to attract internet users to its own commercial site by creating a likelihood of confusion with the Complainant’s mark, which is sufficient to establish bad faith under Paragraph 4(b)(iv) of the Policy.
The inference of bad faith is strengthened by the Respondent’s conduct upon receiving the Complainant’s "cease and desist" letter on March 7, 2002 (see above and Complainant’s exhibit 7). The Respondent, in reply, offered to sell the domain name to the Complainant for a fee of US$125,000, an amount apparently far in excess of the out-of-pocket costs incurred in connection with the domain name (see Complainant’s exhibit 8). This conduct appears to satisfy Paragraph 4(a)(i) of the Policy and might well independently justify a finding of bad faith registration and use. However, since bad faith has already been determined to exist on the basis of subparagraph (iv), the Panel need not make a formal finding with respect to the applicability of subparagraph (i).
For the foregoing reasons, the Panel determines that the domain name in dispute is confusingly similar to the mark of the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name and that it has been registered and is being used in bad faith. Accordingly, the Amended Complaint succeeds and the Panel directs that the domain name <complexionrx.com> be transferred to the Complainant.
D. Brian King
Dated: July 19, 2002