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The Skin Store, Inc. v. eSkinStore.com [2004] GENDND 1375 (6 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Skin Store, Inc. v. eSkinStore.com

Case No. D2004-0661

1. The Parties

The Complainant is The Skin Store, Inc., of Gold River, California, United States of America (“the Complainant”)

The Respondent is eSkinStore.com, of North Vancouver, British Columbia, Canada (“the Respondent”).

2. The Domain Name and Registrar

The disputed domain name <eskinstore.com> (“the Domain Name”) is registered with Network Solutions, LLC (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2004. On August 19, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 25, 2004. the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 26, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2004.

The Center appointed Tony Willoughby as the sole panelist in this matter on September 22, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a Florida corporation which trades variously under the names Skin Store, Skinstore and SSkinStore.com. It has an operating website at “www.skinstore.com”.

The Complainant is the proprietor of a US service mark registration number 2354182 in the Supplemental Register for the mark SKIN STORE for inter alia “computerized online retail services in the field of skin care products …” in Class 35. First use in commerce is claimed from 1997.

The Respondent is a Canadian company. It registered the Domain Name on October 30, 2001. On the Complainant’s evidence, the Respondent has been trading on the Internet via a website connected to the Domain Name since at least as early as April 2003. From the copy of web pages from the Respondent’s website, which are exhibited in the Complaint, it appears that the Respondent has been trading in precisely the same service area as the Complainant, i.e. the online retail sale of skin care products.

On the Registrar’s Whois database, the Respondent is identified as eSkinStore.com. In the Canadian business directory the Respondent is identified as Eternal Skin Care Studio. On the Respondent’s website, it has been identified variously as E-skin Care Store, eSkinStore, Eternal Skin Care Inc. and Eskinstore.com.

The Complainant first wrote to the Respondent on April 10, 2003, drawing attention to the Complainant’s trademark rights and alleging trademark infringement on the part of the Respondent. The letter goes on to seek transfer of the Domain Name to the Complainant.

That letter sought a reply by no later than April 18, 2003, but no reply was forthcoming.

On July 19 and 20, 2004 (15 months later), the Complainant wrote a series of further emails and letters addressed to the various contact addresses for the Respondent. The letters were in substantially the same form, but this time seeking a reply by August 2, 2004. The Respondent did not respond.

The Respondent’s website, which is connected to the Domain Name, links to a website at “www.eskincarestore.com”, which features a large variety of skin care products for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its service mark registration for SKIN STORE.

The Complainant contends that its trademark is famous and has gained a reputation through use. The Complainant contends that it conducts significant volumes of business in both the United States and Canada. The Complainant contends that “the use of Complainant’s trademark via Respondent’s website “www.eskinstore.com” causes customer confusion and demonstrates conclusively that anyone seeing Respondent’s website, or advertising for its website, would believe that it was either associated with, authorised by or sponsored by the Complainant.”

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that there is no relationship between the Respondent and the Complainant and that the Complainant has not licensed or otherwise permitted the Respondent or anybody associated with the Respondent to use its name or its SKIN STORE trademark or to register the Domain Name.

The Complainant contends that there is no suggestion that the Respondent is commonly known by the name SKIN STORE or that it has acquired any trademark rights in that name.

The Complainant asserts that the Respondent does not have any rights developed through use in the name “eskinstore.com” or any other similar mark prior to its registration of the Domain Name in 2001. The Complainant relies heavily on the ‘fact’ that between the letter written in April 2003 and the second tranche of letters written in July 2004 the Respondent changed its name on one part of its website from eskinstore.com to Eternal Skin Care Studio and E-Skin Care Store. However, the Complainant acknowledges that the Respondent’s logo, which features prominently at the top left hand corner of the web page, has remained e-SkinStore throughout. The Complainant asserts that if the Respondent believed it had rights in respect of the Domain Name it would not have made that change.

The Complainant further asserts that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. This is primarily based on the alleged fact that what the Respondent is doing is infringing the Complainant’s trademarks and on that basis cannot constitute a bona fide offering of goods or services.

The Complainant further observes that the Respondent is not making a non-commercial use of the name SKIN STORE, engaged as it is in a commercial enterprise under that name.

The Complainant asserts that the Domain Name was registered in bad faith and is being used in bad faith. In support, the Complainant refers to the fact that the Respondent “failed to conduct a minimal trademark search of all reasonably accessible trademark databases prior to registering the disputed domain name”. The Complainant points to the fact of the name change referred to above and says that this is in effect an acknowledgement by the Respondent that the Respondent is infringing the Complainant’s trademark rights. The Complainant claims that the “Respondent appropriated Complainant’s valuable mark for use in its domain name after Complainant developed the fame and distinctiveness of the SKIN STORE mark for the goods and services described in its trademark registration.” The Complainant asserts that the Respondent is diverting customers from the Complainant’s website to its own websites.

The Complaint ends as follows:-

“The factors listed in the preceding subsection make out Complainant’s proof of Respondent’s bad faith in registration and use of the disputed domain name. Respondent’s registration and use in bad faith is shown by Respondent’s registration of the domain name on October 30, 2001, years after the Complainant’s first use of the mark "SKIN STORE." The fact that Respondent continues to use the mark in commerce via its Domain Name and its prominent use of the SKIN STORE mark on its homepage shows bad faith that Respondent did not discontinue use of the mark entirely after Complainant’s first cease and desist letter.

The Complainant has provided evidence that the Respondent continues to display the SKIN STORE mark on its website, which offers services similar to and in direct competition with those of the Complainant. Also, Respondent continues to promote sales of skincare products, directly in competition with Complainant’s website, via its www.eskinstore.com website and www.eskincarestore.com. Respondent has failed to respond directly to attempted communications by Complainant.

Finally, Respondent intentionally registered ESKINSTORE.COM and is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, endorsement of Respondent’s website or location of a product or service on its website or location.”

B. Respondent

The Respondent has not responded.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has demonstrated to the satisfaction of the Panel that it is the proprietor of a service mark registration for the mark SKIN STORE for, inter alia, the online retail sale of skin care products.

The Domain Name features the generic prefix “e” to indicate electronic activity, the name Skin Store and the generic .com suffix. Clearly, the substance of the Domain Name is the same as the Complainant’s service mark.

The Panel finds that the Domain Name is confusingly similar to a service mark in which the Complainant has rights. The fact that the Respondent is using the Domain Name for the online retail sale of skin care products highlights the potential for confusion.

B. Rights or Legitimate Interests

Proving a negative of this kind is not an easy task and particularly when the Respondent is in a different jurisdiction.

It is now well established that for the purposes of paragraph 4(a)(ii) of the Policy it is sufficient for the Complainant to make out a prima facie case. Having done that, it is for the Respondent to answer that case.

Paragraph 4(c) of the Policy shows how the Respondent may answer the Complainant’s allegation that the Respondent has no rights or legitimate interests in respect of the Domain Name. The paragraph reads as follows:-

“How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

First, however, the Complainant has to make out a prima facie case. The Complaint is full of unsupported assertions, but contains very little evidence of assistance to the Complainant. The Complainant accepts, as it must, that as at the date when the Complainant first notified the Respondent of the dispute, the Respondent was carrying on business under and by reference to the Domain Name. Moreover, the Registrar’s Whois database named the Respondent by reference to the Domain Name and the page from the Respondent’s website printed off by the Complainant on April 9, 2003 features the Respondent’s eSkinStore logo and the text identifies the Respondent variously as Eskinstore.com and eSkinStore. All of this appears in the Complainant’s letter of April 10, 2003 to the Respondent.

The Complainant claims that none of this is of any assistance to the Respondent, because nothing that the Respondent has done has been in good faith. The Complainant alleges that what the Respondent is doing is an infringement of the Complainant’s service mark and has been with the intention all along of deceiving Internet users for commercial gain. The Complainant asserts that confusion of Internet users is taking place. The Complainant further asserts that if the Respondent had thought that the Respondent had any relevant rights or legitimate interests in respect of the Domain Name, the Respondent would not have changed its name following receipt of the Complainant’s first letter from eskinstore.com to Eternal Skin Care Studio and E-Skin Care Store.

In effect, the Complainant is saying that the Respondent cannot pray in aid paragraphs 4(c)(i) and (ii) of the Policy because the Respondent has been infringing the Complainant’s service mark rights and/or has been acting in bad faith.

The evidence in support of those assertions is very weak. The Panel dismisses the Complainant’s contentions in relation to the Respondent’s name change referred to above. For the Complainant’s point to have any merit, the Respondent would have had to cease all other uses of the offending name on the website, but manifestly did not do so.

Despite the Complainant’s assertions as to confusion of Internet users, there is no evidence of any kind of actual confusion and while evidence of that kind is often very difficult to obtain, it is nonetheless the fact that the Respondent had been trading via the Domain Name for at least 15 months prior to the launching of the Complaint.

The assertion that the Respondent deliberately set out to divert the Complainant’s customers to its website is wholly unsupported. A good start would have been to put before the Panel sufficient evidence to bear out the Complainant’s claim that its name was very well-known in 2001 and so well-known across North America that it is inconceivable that the Respondent could have registered the Domain Name in ignorance of the Complainant and its service mark. No evidence of that kind has been put before the Panel.

As to service mark infringement, the Panel accepts that the Domain Name is, on its face, confusingly similar to the Complainant’s United States service mark and that the Respondent’s website is directed to both Canada and the United States in relation to precisely the same type of services and that, in consequence, the Respondent may be infringing the Complainant’s rights. However, the Panel notes that the service mark in question, SKIN STORE, while not strictly descriptive, is highly suggestive of the services covered by the registration (e.g. online retail sale of skin care products). The Panel is not competent to assess the issue under US law, but is by no means certain that an infringement action would necessarily succeed.

Moreover, while an infringement action might succeed in the United States, might not the Respondent nonetheless have a legitimate interest in respect of the Domain Name in Canada?

The issue is far from straightforward. A simple option for the Panel would be to note the Complainant’s assertions, note the absence of a Response and infer that the Respondent has no answer to the Complainant’s assertions. The trouble is that the Panel is far from certain that the Complainant has done anything like enough to make out a prima facie case calling for a response from the Respondent. Apart from the service mark registration certificate, there is no hard evidence of any kind. Everything is assertion. The Panel suspects from looking at the Complainant’s homepage at “www.skinstore.com” that further evidence could have been produced, but it is not the job of the Panel to hunt it out.

In light of the Panel’s finding under Bad Faith, it is not necessary for the Panel to come to a concluded view on whether or not the Respondent has rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

The Complainant claims bad faith registration and use of the Domain Name pursuant to paragraph 4(b)(iv) of the Policy. Paragraph 4(b)(iv) reads as follows:

“iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

Generally, panels deciding these disputes have taken the view that a complaint cannot succeed unless at the outset, when registering the Domain Name, the Respondent did so with the Complainant and/or its trade/service mark in mind. It is to be noted, however, that sub-paragraph (iv), unlike the three preceding sub-paragraphs, makes no reference to the Respondent’s motives at time of registration of the Domain Name. Accordingly, on the face of it, intentional bad faith use is deemed to be “bad faith registration and use” for the purposes of paragraph 4(a)(iii) of the Policy even though the bad faith intent may not have existed at the time of registration.

The Panel believes that this may well have been a drafting error, but for the purpose of this dispute, it does not matter. What were the Respondent’s motives when it first started using the Domain Name to trade on the Internet some time between registration of the Domain Name in October 2001 and April 2003, when the Complainant first became aware of the Respondent’s website?

The Complaint contains nothing to assist the Panel in this regard. The Complainant seems to be asking the Panel to accept that the Complainant and its service mark was so well-known across North America prior to April 2003 that it is inconceivable that the Respondent can have started trading via the Domain Name without the Complainant and/or its service mark firmly in mind. The Complaint contains no evidence whatever as to the nature and extent of the Complainant’s fame at that time.

Indeed, it is plain from the Complaint that the Complainant is not certain that the Respondent would have heard of the Complainant when the Respondent started trading. The Complainant says in the Complaint: “Additionally, it appears clear that Respondent failed to conduct a minimal trademark search of all reasonably accessible trademark databases prior to registering the disputed domain name. Respondent directs its business to customers from the US and Canada; therefore it is reasonable to assume a search should have occurred in these markets.” The Complainant is saying here that if the Respondent had carried out a US trademark search, it would have been alerted to the existence of the Complainant’s trademark of which it was not previously aware.

The Panel notes that the Domain Name is the sort of name, suggestive of online retail sale of skin care products and services, that anyone engaged in that field of activity might reasonably wish to use and simply because of its suggestive value. The Panel has nothing before it to indicate that the Respondent was deliberately intending to divert the Complainant’s customers, save possibly the absence of a reply to the Complainant’s allegations.

The Panel is not prepared to draw that inference in circumstances where (a) the Respondent appears to have been conducting trade under and by reference to the Domain Name for 18 months or more and (b) the Complainant sat back for 15 of those months following expiry of the first ultimatum without doing anything. The Complainant’s delay in acting is not conclusive of anything, but it does not seem to the Panel to be the behaviour of someone suffering at the hands of a cybersquatter, whatever might have been the competing pressures on the Complainant’s time.

In the circumstances, the Panel is of the view that this is the sort of dispute which would be better decided by a Court rather than by way of the UDRP. The Panel does not have before it sufficient evidence to establish that this is a clear case of cybersquatting.

The Panel is not satisfied that the Domain Name was registered and is being used in bad faith.

7. Decision

The Complaint is dismissed.

Tony Willoughby
Sole Panelist

Date: October 6, 2004