DECISION

Dermalogica, Inc. and International Dermal Institute, Inc. v. Skin and Farah Rodef

Claim Number:  FA0307000175290

PARTIES

Complainants are Dermalogica, Inc. and International Dermal Institute, Inc., Torrance, CA (“Complainant”) represented by David J Steele, of Christie, Parker & Hale LLP.  Respondent is Skin and Farah Rodef, Great Neck, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dermalogicausa.com>, registered with Enom, Inc.

PANEL

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

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainants 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 July 31, 2003.

On August 1, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <dermalogicausa.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 August 1, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 21, 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@dermalogicausa.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 Septembeer 02, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jaqmes A. Crary 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

Complainants requests that the domain name be transferred from Respondent to “Complainant.”

PARTIES' CONTENTIONS

A.  Complainants makes the following assertions:

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

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

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

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

FINDINGS

Complainant Dermalogica, Inc., registered the DERMALOGICA mark on the Principal Register of the U.S. Patent and Trademark Office on May 23, 1989 (U.S. Reg. No. 1,539,948). This first named Complainant used the mark in commerce since 1986 in connection with skin care products. In addition to registering the mark in the U.S., Dermalogica has registered the DERMALOGICA mark over 60 times in jurisdictions around the world.

Complainant International Dermal Institute, Inc., founded by the same individuals who founded Dermalogica, Inc., was assigned the entire interest and goodwill in the DERMALOGICA mark on October 30, 2000. This second Complainant, now the licensor of the mark to Complainant Dermalogica, operates a post-graduate training facility for professional skin care therapists, and all products bearing the registered DERMALOGICA mark are researched and developed by the International Dermal Institute. Over 3,500 skin care centers in the U.S. cary Complainants’ products. Both Dermalogica, Inc. and International Dermal Institute, Inc. will herein be referred to colletively as “Complainant.”

 

Respondent, Skin and Farah Rodef, registered the <dermalogicausa.com> domain name on July 29, 2002, and is not licensed or authorized by Complainant to use the DERMALOGICA mark for any purpose. Respondent has not used the disputed domain name since its registration over one year ago.

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 rights in the DERMALOGICA mark through registration of the mark on the Principal Register of the U.S. Patent Trademark Office, as well as through widespread use of the mark in commerce.

Respondent’s <dermalogicausa.com> domain name is confusingly similar to Complainant’s DERMALOGICA mark. Respondent entirely appropriates Complainant’s distinctive mark in its domain name and merely adds the geographic identifier “usa.” This minor addition does not dispell the confusingly similar impression Internet users receive upon viewing the disputed domain name due to Respondent’s prominent placement of Complainant’s mark in the domain name. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law); see also Oki Data Am.s, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).

Accordingly, the Panel finds that the <dermalogicausa.com> domain name is confusingly similar to Complainant’s DERMALOGICA mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not used the <dermalogicausa.com> domain name since it registered the domain name, without authorization by Complainant to use the DERMALOGICA mark, over one year ago. As the domain name entirely incorporates Complainant’s distinctive mark, and as Respondent has not come forward to rebut Complainant’s assertion that Respondent has no bona fide use planned for its infringing domain name, the Panel does not consider Respondent’s passive holding of the disputed domain name as evidence of a bona fide offering of goods or services. Similarly, Respondent’s passive holding of this infringing domain name cannot be considered to be a legitimate noncommercial or fair use of the domain name. For these reasons, the safe harbors of Policy ¶¶ 4(c)(i) and (iii) are inapplicable to Respondent. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

As Respondent names itself as “Skin” or “Farah Rodef” in its WHOIS contact information, a name that bears no relationship to Complainant’s distinctive DERMALOGICA mark, and is not a licensee or assignee of Complainant, the Panel infers that Respondent is not “commonly known by” the <dermalogicausa.com> domain name, rendering Policy ¶ 4(c)(ii) inapplicable to Respondent. See Tercent Inc. v. 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); see also 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").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <dermalogicausa.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent has passively held the <dermalogicausa.com> domain name since July of 2002. In light of Respondent’s registration of a domain name whose value stems exclusively from its reliance on Complainant’s DERMALOGICA mark, the Panel concludes that Respondent’s knowing registration of an infringing domain name and subsequent failure to use that domain name for any purpose amounts to bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (Nov. 26, 2000) (finding bad faith where (1) Respondent failed to use the domain name and (2) it is clear that Respondent registered the domain name as an opportunistic attempt to gain from the goodwill of Complainant).

The Panel thus finds that Respondent registered and used the <dermalogicausa.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Thus, the Panel Orders that the <dermalogicausa.com> domain name be TRANSFERRED from Respondent to the International Dermal Institute, Inc., the designated assignee of Dermalogica’s original registered rights in the DERMALOGICA mark.

James A. Crary, Panelist

September12, 2003

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