DECISION

Dermalogica, Inc. and International Dermal Institute, Inc. v. Christopher Nall

Claim Number:  FA0309000193764

PARTIES

Complainant is Dermalogica, Inc. and International Dermal Institute, Inc., Torrance, CA (collectively, “Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP.  Respondent is Christopher Nall, Waterloo, Liverpool, Merseyside, United Kingdom (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dermalogicamailorder.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.Com.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.

Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 8, 2003; the Forum received a hard copy of the Complaint on September 9, 2003.

On September 9, 2003, Computer Services Langenbach Gmbh d/b/a Joker.Com confirmed by e-mail to the Forum that the domain name <dermalogicamailorder.com> is registered with Computer Services Langenbach Gmbh d/b/a Joker.Com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.Com verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.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 September 12, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 2, 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@dermalogicamailorder.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 October 10, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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. The domain name registered by Respondent, <dermalogicamailorder.com>, is confusingly similar to Complainant’s DERMALOGICA mark.

2. Respondent has no rights to or legitimate interests in the <dermalogicamailorder.com> domain name.

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

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

FINDINGS

The International Dermal Institute, Inc. is the holder of the DERMALOGICA mark while Dermalogica, Inc. is licensed to use the DERMALOGICA mark.  The DERMALOGICA mark has been used 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’s DERMALOGICA mark was registered on the Principal Register of the United States Patent and Trademark Office (“USPTO”) on May 23, 1989 (Reg. No. 1,539,948).  In addition, Complainant’s DERMALOGICA mark is the subject of over 60 trademark registrations in other countries and jurisdictions, including European Community Mark No. 256,156 (registered on January 22, 1999) and United Kingdom Registration No. 1,301,528 (registered on August 4, 1989)

Over 3,500 skin care centers in the United States carry Complainant’s products, with many thousands more in Europe, Asia and Australia.  In addition, many news and magazine reports and stories print information about Complainant’s products.

Complainant operates an extensive website located at the <dermalogica.com> domain name.  At its website, Complainant provides information regarding its DERMALOGICA products, locations and contact information for the thousands of skin care professionals offering Complainant’s products, general skin care information and information about Complainant. 

Respondent registered the <dermalogicamailorder.com> domain name February 22, 2003.  Since Respondent registered the domain name, it has not used nor demonstrated any preparations to use the domain name.  Respondent’s only use of the domain name has been to offer it for sale to Complainant for 10,000 British Pounds (approximately $16,000. U.S.D.).

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 will draw such inferences as the Panel 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 to and/or Confusingly Similar

The Panel finds that Complainant established in this proceeding that it has rights in the DERMALOGICA mark through various registrations of the mark throughout the world.  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’s 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 subject domain name <dermalogicamailorder.com> is confusingly similar to Complainant’s DERMALOGICA mark.  Respondent merely added the generic phrase “mail order” to Complainant’s entire mark.  Respondent’s appenditure of the “mail order” phrase does not avoid likely confusion with respect to Complainant’s registered mark.  Thus, the Panel concludes that Respondent’s domain name is confusingly similar to Complaiant’s mark pursuant to Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum April 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.  

Rights to or Legitimate Interests

Complainant established rights in the mark contained within the domain name and asserted that Respondent has no such rights.  Respondent has not submitted a Response in this case.  Thus, Respondent failed to provide any evidence to the Panel that it has rights or legitimate interests in the <dermalogicamailorder.com> domain name.  Therefore, the Panel accepts all of the allegations presented in the Complaint as true and finds that Respondent lacks rights and legitimate interests in the domain name at issue.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also 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).

Respondent is not known individually, or as a business, or in any other manner by the <dermalogicamailorder.com> domain name.  In addition, Respondent does not have any legal relationship with Complainant that would entitle it to use Complainant’s mark.  Accordingly, the Panel concludes that Respondent is not commonly known by 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 interest 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 Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).  

Since Respondent registered the <dermalogicamailorder.com> domain name February 22, 2003, Respondent has not made a legitimate use of the domain name, nor has it made demonstrable preparations to legitimately use the domain name.  In addition, Respondent tried to sell the domain name to Complainant for $10,000 British Pounds.  Thus, the Panel finds that Respondent is not using the domain name at issue in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.  

Registration and Use in Bad Faith

Complainant alleges that Respondent acted in bad faith in registering, holding the name, and offering to sell it to Complainant for an amount in excess of expected registration costs. Respondent failed to use the domain name for any purpose other than to offer the <dermalogicamailorder.com> domain name for sale to Complainant for 10,000 Pounds.  Respondent’s demand is clearly in excess of out-of-pocket costs directly related to the domain name.  Accordingly, the Panel concludes that Respondent registered and used the domain name at issue in bad faith under Policy ¶ 4(b)(i).  See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith); see also Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where Respondent made no use of the domain names except to offer them to sale to Complainant); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).

Furthermore, Respondent has not used the <dermalogicamailorder.com> domain name since it registered the domain name in February of 2003.  Moreover, Respondent has not provided any evidence showing that it has made any demonstrable preparations to use the domain name.  Thus, the Panel finds that Respondent’s nonuse of the domain name at issue is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

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

Hon. Carolyn Marks Johnson, Panelist

Dated: October 23, 2003.

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