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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Complexions Rx, Inc. v. Julie Hogan

Case No. D2002-0484l (WIPO July 19, 2002)

In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel determined that Respondent violated the UDRP by registering the domain name Complexionrx.com, which contained all but the plural "s" of Complainant's previously registered trademark "Complexions Rx."  At this domain, Respondent offered for sale the same type of products Complainant sold at its own web site.  The Panel held that Respondent's use of the disputed domain in the operation of its business did not create a legitimate interest in that domain sufficient to defeat Complainant's claim, given the fact that Complainant had registered the mark with the USPTO prior to the commencement of Respondent's use.  Such registration gave Respondent constructive notice of Complainant's rights in the mark, and thus prevented Respondent's use either from being "bona fide" or creating a legitimate interest in the domain name.

Complainant Complexions Rx, Inc. is a Delaware Corporation that operates a web site at Complexionsrx.com, at which it sells cosmetics and skin care products.  Complainant registered its domain in August 1998.  Complainant also holds the United States trademark registration in the mark "Complexions Rx," which mark it first registered in September 2000. 

Respondent Julie Hogan, a resident of Florida, registered the domain Complexionrx.com in June 2001, some nine months after Complainant's trademark was first registered with the USPTO.  At this domain, Respondent sells products substantially the same as those offered by Complainant.

In March 2001, after discovering this use, Complainant sent Respondent a cease and desist letter.  Respondent replied by offering to sell the disputed domain for $125,000.  Complainant rejected this offer and instead commenced this UDRP proceeding.

To prevail in a UDRP proceeding, a Complainant must show that the domain name at issue is identical or confusingly similar to Complainant's mark, that Respondent has no rights or legitimate interests in the domain name, and that Respondent registered and is using the domain name in bad faith.

The Panel found that Complainant had met this burden, and accordingly resolved this domain name dispute by directing the transfer of the domain name in dispute to Complainant.

Respondent's domain name was confusingly similar to Complainant's mark because it incorporated that mark in its entirety but for the elimination of the plural "s".  The Panel found additional support for this determination in the fact that the domain was being used to sell competing products.  Said the Panel:

The disputed domain name almost wholly incorporates the Complainant's mark, the only difference being the omission of the plural "s" in the word "complexions."  Previous Panels have held that "[e]ssential or virtual identity is sufficient for the purposes of the Policy," Playboy Enterprises International, Inc. v Sookwan Park, WIPO Case No. D2001-0778 (October 1, 2001), at page 4, and that the addition of the plural "s" (or, in this Panel's view, its omission) is an insignificant distinction that "do[es] not change the likelihood of confusion."  Nokia Corp. v. Uday Lakhani, WIPO Case No. D2000-0833 (Oct. 19, 2000), at p. 5.

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The fact that the Respondent is using the disputed domain name to sell products and services substantially identical to those marketed by the Complainant increases the likelihood of consumer confusion.

The Panel also found that Respondent did not have a legitimate interest in the domain, despite its use of the domain in the operation of its business.  Under the UDRP, a party has a legitimate interest in the domain if "before any notice . . . of the dispute [Respondent] use[s], or demonstra[tes] 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 . . . ".  UDRP 4(c)(i).  Respondent's use did commence before it learned of any dispute with Complainant.  However, the Panel held that such use was not in connection with a bona fide offering of goods, because Respondent had selected a domain which contained the mark of another, a fact of which it was deemed to have received constructive notice by virtue of Complainant's registration of its mark with the USPTO prior to Respondent's registration of its domain.  Said the Panel:

First, the Respondent cannot be said to be using the domain name in connection with a bona fide offering of goods or services.  Although Respondent is apparently selling products via the domain name, such use is not bona fide on the facts here.  Prior to the time that she registered the disputed domain name, the Respondent had at least constructive notice of the Complainant's rights in the mark "Complexion RX" (see below)  The Respondent nonetheless proceeded to register a domain name confusingly similar to the Complainant's mark and to offer through that domain name goods virtually identical to those marketed by the Complainant corporation.  In these circumstances, the Respondent's commercial activities, using the domain name, cannot properly be characterized as bona fide.

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The Complainant registered its mark with the U.S. trademark authorities well prior to the Respondent's registration of the disputed domain name.  Under Section 22 of the United States Trademark Act, 15 U.S.C. §1072, "[r]gistration of a mark on the principal register . . . shall be constructive notice of the registrant's claim of ownership thereof."  Thus the Respondent, who resides and operates in Florida, was on constructive notice of the Complainant's rights in the name "Complexion Rx" prior to registering the contested domain name.

Finally, the Panel found that Respondent's registration and use was in bad faith.  By virtue of its constructive notice of Complainant's ownership of the mark (and possible actual notice of that fact given the uniqueness of the mark) the Panel found that Respondent had registered the domain to attract consumers by creating confusion as to the source of Respondent's site, and its affiliation with Complainant.  The Panel found additional support for its conclusion that the Respondent had proceeded in bad faith in the offer made by Respondent to transfer the domain for $125,000.

The Panel accordingly directed the transfer of the domain name in dispute to Complainant.  It should be noted that Respondent did not submit a formal response in this proceeding.

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