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Generic Top Level Domain Name (gTLD) Decisions |
Guthy-Renker Corporation v. Marvin
Addington
Claim Number: FA0204000109053
PARTIES
Complainant
is Guthy-Renker Corporation, Palm
Desert, CA (“Complainant”) represented by Daniel
M. Cislo, of Cislo & Thomas LLP. Respondent is Marvin Addington, Hemet, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <principalsecrets.com>,
registered with VeriSign, 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 4, 2002; the Forum received
a hard copy of the
Complaint on April 8, 2002.
On
April 8, 2002, VeriSign, Inc. confirmed by e-mail to the Forum that the domain
name <principalsecrets.com> is
registered with VeriSign, Inc. and that Respondent is the current registrant of
the name. VeriSign, Inc. has verified
that Respondent is bound by the VeriSign, 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
April 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 29,
2002 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@principalsecrets.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 Forum transmitted
to the parties a Notification of Respondent Default.
On
May 15, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed the Honorable
Charles K. McCotter,
Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the 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 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
The
disputed domain name <principalsecrets.com>
is confusingly similar to PRINCIPAL SECRET, a trademark in which Complainant
holds rights, as the exclusive licensee of Victoria
Principal Productions, Inc.
Respondent
has no rights or legitimate interests in respect of the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
did not submit a Response in this proceeding.
FINDINGS
Complainant has provided evidence that it
acquired exclusive trademark rights in the PRINCIPAL SECRET mark belonging to
Victoria Principal
Productions, Inc., including the right to bring legal
proceedings related to the PRINCIPAL SECRET mark.
The PRINCIPAL SECRET mark was registered
on the Principal Register of the United States Patent and Trademark Office on
August 31,
1993 as Reg. No. 1,790,913 in association with skin and body care
products. Complainant and/or its assignor
have continuously used the mark in commerce since at least 1991. Complainant also holds the rights to three
other registered trademarks incorporating the words PRINCIPAL SECRET.
Complainant provides information related
to its PRINCIPAL SECRET products at its websites located at
<principalsecret.com> and
<guthy-renker.com>.
Respondent registered the disputed domain
name on May 8, 2001 and has used the domain name to redirect its viewers to
<dietsupplement.com>,
a website that offers for sale diet supplements
that will purportedly improve one’s appearance.
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 the 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 the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant
has rights; and
(2)
the 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 its rights in
the PRINCIPAL SECRET mark through its assignor’s registration with the U.S.
Patent and Trademark
Office and continuous subsequent use. The disputed domain name is confusingly
similar to Complainant’s mark as it merely adds the letter “s” to the mark
along with the
generic top level domain (“gTLD”) “.com.”
The addition of a letter to a mark does
not distinguish a domain name from the mark to defeat a claim of confusing
similarity. See Blue Cross & Blue Shield Ass’n v.
InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding
that a domain name which merely adds the letter ‘s’ to Complainant’s mark is
sufficiently
similar to the mark to cause a likelihood of confusion among the
users of the Complainant’s services and those who were to view a
web site
provided by the Respondent accessed through the contested domain name); see
also Nat’l Geographic Soc. v.
Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that
the domain name <nationalgeographics.com> was confusingly similar to
Complainant’s NATIONAL GEOGRAPHIC mark).
Similarly, the use of a gTLD does not
distinguish the domain name from the mark as the top level domain is a required
element in domain
names. See Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain
name for the purpose of determining
whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Complainant has demonstrated its rights
to and interests in its marks. Because
Respondent has not submitted a Response in this matter, the Panel may presume
it holds no such rights or interests in the
disputed domain name. See 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 interest in the domain names).
Further, the fact that Respondent chose
not to respond allows the Panel to draw all inferences in favor of Complainant. 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”).
Respondent has not made any use of the
disputed domain name except to redirect Internet users to a website offering
dietary supplement
products for sale.
Having held registration of the domain name for approximately one year,
such conduct indicates that Respondent does not have rights
or interests in the
domain name; rather, Respondent likely registered the domain name to ensnare
unsuspecting Internet users seeking
Complainant’s website to its own
website. Such behavior does not amount
to a bona fide offering of goods or services within the meaning of Policy ¶
4(c)(i). See Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by
using Complainant’s trademarks).
There is no evidence to suggest that
Respondent is commonly known as “principalsecrets” or <principalsecrets.com> to establish rights under Policy ¶
4(c)(ii); Respondent is only known to this Panel as Marvin Addington. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc.,
AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests
where no such right or interest was immediately
apparent to the Panel and
Respondent did not come forward to suggest any right or interest it may have
possessed).
Further, Respondent’s use of the disputed
domain name to redirect Internet users seeking Complainant’s products to a
different commercial
website is not a legitimate noncommercial or fair use of
the disputed domain name pursuant to Policy ¶ 4(c)(iii). See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that
use of the domain name to direct users to other, unconnected websites does not
constitute
a legitimate interest in the domain name); see also Kosmea Pty Ltd. v. Krpan, D2000-0948
(WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has
an intention to divert consumers of Complainant’s
products to Respondent’s site
by using Complainant’s mark).
The Panel finds that Respondent has no
rights or legitimate interests in respect of the disputed domain name and, thus,
Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent registered and used the
disputed domain name, which is nearly identical to Complainant’s registered
trademark, in order
to attract, for commercial gain, Internet users to
Respondent’s <dietsupplement.com> website by creating confusion as to the
source or affiliation of its website.
Such behavior demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum
Sept. 12, 2000) (finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe
on Complainant’s goodwill and attract Internet
users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users
seeking the Complainant’s
site to its own website for commercial gain).
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 the requested relief
should be hereby
granted.
Accordingly, it is Ordered that the <principalsecrets.com> domain
name be transferred from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: May 22, 2002
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