DECISION

Dermalogica, Inc. and International Dermal Institute, Inc. v. Domains to Develop

Claim Number: FA0307000175201

PARTIES

Complainant is Dermalogica, Inc. and International Dermal Institute, Inc., Torrance, CA (hereinafter collectively as “Complainant”) represented by Dan J. Steele of Christie, Parker & Hale LLP.  Respondent is Domains to Develop (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dermatalogica.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

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 (the "Forum") electronically on July 29, 2003; the Forum received a hard copy of the Complaint on the same date.

On August 18, 2003, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <dermatalogica.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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 August 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 8, 2003 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@dermatalogica.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 September 16, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 makes the following assertions:

1. Respondent’s <dermatalogica.com> domain name is confusingly similar to Complainant’s DERMALOGICA mark.

2. Respondent does not have any rights or legitimate interests in the <dermatalogica.com> domain name.

3. Respondent registered and used the <dermatalogica.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, International Dermal Institute, Inc., provides evidence of ownership of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the DERMALOGICA mark (Reg. No. 1,539,948 registered on May 23, 1989) in relation to skin-care masks, lotions, cleansers, creams, moisturizers, scrubs, gels and make-up remover. Complainant, Dermalogica, Inc., provides evidence of an assignment of the rights in the mark to International Dermal Institute, Inc. International Dermal Institute, Inc. asserts that it licenses the mark to Dermalogica, Inc.

Respondent registered the <dermatalogica.com> domain name on November 17, 2002. Respondent is using the disputed domain name to redirect Internet traffic to a portal website that includes a pop-up advertisement offering links to websites that offer Complainant’s products for sale.

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 its rights in the DERMALOGICA mark through registration with the USPTO. 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”).

Complainant argues that Respondent’s <dermatalogica.com> domain name is confusingly similar to Complainant’s DERMALOGICA mark because the disputed domain name incorporates Complainant’s entire mark and merely adds the syllable “ta” to the mark. The addition of two letters does not sufficiently differentiate Respondent’s domain name from Complainant’s mark for purposes of Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that Respondent’s domain name, <americanonline.com>, is confusingly similar to Complainant’s famous AMERICA ONLINE mark).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not submitted a Response in this proceeding. Therefore, the Panel accepts all reasonable allegations and inferences in the Complaint to be true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); 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).

Furthermore, based on Respondent’s failure to contest the Complaint, the Panel presumes Respondent lacks any rights to or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise); 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 interest in the domain names).

Respondent is using the <dermatalogica.com> domain name to redirect Internet users to a portal website, which features a pop-up advertisement that provides links to websites offering Complainant’s products for sale. The use of a domain name confusingly similar to Complainant’s marks to divert Internet traffic to websites that offer Complainant’s products for sale does not suggest a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum April 5, 2003) (holding that Respondent’s use of the disputed domain name, a simple misspelling of Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum March 18, 2003) (holding that Respondent’s use of confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements was not a bona fide offering of goods or services).

Moreover, Respondent has offered no proof and there is no evidence in the record that indicates Respondent is commonly known by either DERMATALOGICA or <dermatalogica.com>. Thus, the Panel finds that Respondent has failed to establish any rights to or legitimate interests in the disputed domain name in accord with Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “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 finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s use of a domain name confusingly similar to Complainant’s DERMALOGICA mark to provide links to websites that offer Complainant’s products for sale suggests that Respondent is profiting from its diversion of Internet users from Complainant’s website. The use demonstrates that the <dermatalogica.com> domain name was registered and is being used in bad faith because Respondent is capitalizing on the likelihood of confusion between the disputed domain name and the DERMALOGICA mark. The Panel finds that Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); 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).

Typosquatting is the intentional registration of a domain name with a slight derivation from a mark in which another party has rights. Respondent’s registration of a domain name that includes a simple misspelling of Complainant’s mark indicates typosquatting. Typosquatting itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”).

The Panel finds that Policy ¶ 4(a)(iii) has been established.

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 <dermatalogica.com> domain name be TRANSFERRED from Respondent to Complainant, International Dermal Institute, Inc.

John J. Upchurch , Panelist

Dated:  September 22, 2003

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