WIPO Domain Name Decision: D2006-1476

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Klein-Becker IP Holdings, LLC v. Client Domain

Case No. D2006-1476

1. The Parties

The Complainant is Klein-Becker IP Holdings, LLC, Nevada, United States of America, represented by Nagin Gallop & Figueredo, P.A., United States of America.

The Respondent is Client Domain, Essex, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <strivecton.com> is registered with Fabulous.com (hereafter the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2006. On November 21, 2006, the Center made certain verifications with the Registrar. On November 22, 2006, the Registar responded to the Center’s queries. The Center verified that the Complaint satisfied the formal requirements of the UDRP (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”). On November 28, 2006, the Center notified the Respondent that an administrative proceeding had been commenced against it pursuant to the Policy. On December 21, 2006, the Center notified the Respondent that it had failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding. On January 9, 2007, notification was given that an Administrative Panel had been appointed, consisting of a single member: Hugues G. Richard.

4. Factual Background

The Complainant is the owner of the trademark STRIVECTIN-HC and the owner by assignment of the trademarks STRIVECTIN-SD and STRIVECTIN (collectively, the “STRIVECTIN Marks”). The STRIVECTIN Marks have been used by the Complainant in connection with various cosmeceutical products since at least as early as August 16, 2002.

The STRIVECTIN-SD Mark was registered in the United States of America in 2003 as U.S. Registration No. 2,760,414 by Western Holdings, LLC, which then assigned the Mark to the Complainant.

A U.S. trademark application bearing U.S. Serial No. 78479381 was filed for the STRIVECTIN Mark in 2004, and has been approved for registration.

A U.S. trademark application bearing U.S. Serial No. 78792433 was filed for STRIVECTIN-HC Mark on January 16, 2006.

The STRIVECTIN Marks are used around the world by the Complainant in at least 11 countries, including European Community trademarks, Registration Numbers 4051124 and 3373008.

The Complainant licenses the STRIVECTIN Marks to Klein-Becker usa, LLC (“Complainant’s Licensee”) for the manufacture, distribution and sale of various cosmeceutical products, including a popular topical preparation for the treatment of stretch marks called STRIVECTIN-SD and a topical hand cream called STRIVECTIN-HC. The STRIVECTIN-SD and STRIVECTIN-HC brand formulas are sold in numerous retail stores and on a Web site owned by the Complainant’s Licensee, including “www.strivectin.com”. The products also are sold on Web sites and in brick-and-mortar stores in the United States of America and abroad by retailers such as Macy’s, Bloomingdales and Saks Fifth Avenue, as well as on other Web sites, pursuant to License Agreements with the owners/operators of those stores and Web sites.

5. Parties’ Contentions

A. Complainant

i) The Domain Name Is Identical Or Confusingly Similar To A Trademark In Which The Complainant Has Rights.

The Complainant contends that the Domain Name in dispute <strivecton.com> is nearly identical to the Complainant’s trademarks. The Respondent’s registration of the Complainant’s mark with an “o” instead of an “i” fails to create a distinct and separate mark, and is thus confusingly similar to the Complainant’s marks. See G.D. Searle & Co. v. Per Ronnlund, FA 00116896.

ii) The Respondent Has No Rights Or Legitimate Interests In Respect Of The Domain Name That Is The Subject Of This Complaint.

The Complainant contends that the Domain Name <strivecton.com> is not currently in use by the Respondent or any other party. Further, the Respondent lacks any rights or legitimate interests in the STRIVECTIN Marks, as it has no relationship with the Complainant, is not an authorized dealer of the goods in connection with which the STRIVECTIN Marks are used, and is not licensed or authorized to use such marks. See Southern Exposure v. Southern Exposure, Inc., FA 94864; Klein-Becker IP Holdings, LLC v. muscledrive, FA 0603000654468. Further, the Respondent is not commonly known by this Domain Name. See Gallup Inc. v. Amish Country Store, FA 96209. Thus, the Respondent has no legitimate rights or interests in the Domain Name.

iii) The Domain Name Was Registered In Bad Faith And Is Being Used In Bad Faith By The Respondent.

As stated above, the Complainant contends that the Respondent lacks any rights or legitimate interests in the STRIVECTIN Marks. Therefore, registration of the Domain Name was without any legitimate purpose or intent. The Complainant contends that the Respondent’s sole purpose in registering the Domain Name was to intentionally attract consumers to the Respondent’s Web site for commercial gain and to divert business away from the Complainant by obtaining a Domain Name registration which is essentially identical or confusingly similar to the Complainant’s trademark in violation of Policy 4(b)(iii) and 4(b)(iv).

The Complainant contends that the Respondent’s obligation under paragraph 2 of the Policy required it to represent and warrant that its registration of the concerned Domain Name would not infringe upon or otherwise violate the rights of any third party, under its responsibility to determine whether such domain name registration infringes or violates someone else’s rights.

Finally, the Complainant contends that it would appear that the Respondent may have purchased the Domain Name with the intention of selling it. (“Whois” printout in Annex 1 to the Complaint, soliciting “an anonymous offer to buy this name.”)

For all these reasons, the Complainant contends that the Domain Name shall be deemed to have been registered and used bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s Complaint. 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 the Respondent’s failure to submit a response, the Panel shall decide this Administrative Proceeding on the basis of the 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.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain and order that a Domain Name should be cancelled or transferred:

(1) the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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.

A. Identical or Confusingly Similar

The Panel considers that the Complainant clearly has rights in the STRIVECTIN Marks by virtue of its trademark registrations and of its use of the mark in the United States of America and abroad. The evidence indicates that the Complainant has acquired considerable goodwill associate with these marks.

The Panel further considers that the Domain Name <strivecton.com> is confusingly similar to the Complainant’s STRIVECTIN Marks: the fact of changing one letter in the mark does not avoid the likelihood of confusion. This is a finding that has been widely retained by different Panels having to decide whether likelihood of confusion exists or not. The Respondent’s registration of the Complainant’s mark with the substitution of the letter “i” by the letter “o” fails to create a distinct and separate mark, thereby succumbing to Policy, paragraph 4(a)(i)’s confusingly similar analysis. See Arthur Guinness Son & Co. (Dublin) Limited. v. Tim Healy/BOSTH, WIPO Case No. D2001-0026.

The Panel notes that although the domain name appears to have been registered prior to the grant of registered trademark rights, it is well established that for the purpose of find identity or confusing similarity the Policy includes no express requirement for the registration of trademark to precede the registration of the domain name.

Therefore the Panel finds that the Complainant has proven that the Domain Name registered by the Respondent is confusingly similar to a trademark in which the Complainant has rights thereby satisfying paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In not submitting a response in this proceeding, the Respondent has failed to contest the Complainant’s allegations. Therefore, all reasonable presumptions shall be resolved in favor of the Complainant. Also, the Respondent has failed to advance circumstances that would persuade the Panel to find in its favor. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the Domain Name.

In the Panel’s view, the Respondent has no rights or legitimate interests in respect of the Domain Name. There is no relationship between the Complainant and the Respondent. It is not licensed nor authorized to use such trademark. The Respondent is not known by the Domain Name and has not used it in connection with a bona fide offering of goods or services. Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The criteria listed in paragraph 4(b) of the Policy represent an unexhaustive listing of bad faith circumstances. When determining whether the Respondent registered and used the <strivecton.com> Domain Name in bad faith, it is proper for the Panel to consider the totality of circumstances surrounding the registration and dispute in general.

The Panel agrees with the Complainant when it alleges that the registration of the Domain Name was without any legitimate purpose or intent because of the Respondent’s lack of any rights or legitimate interests in the STRIVECTIN Marks. The Panels also agrees with the Complainant’s allegation that because the Respondent is not licensed to use the Complainant’s trademarks and does not sell the Complainant’s goods, it can only be concluded that the Respondent’s sole purpose in registering the domain name was to intentionally attract consumers to the Respondent’s Web site for commercial gain and to divert business away from the Complainant by obtaining a Domain Name registration which is essentially identical or confusingly similar to the Complainant’s trademarks.

While the Panel notes that the domain name appears to have been registered prior to the Complainant’s grant of registered trademark rights, in view of the substantial goodwill and indications of the publicity of the Complainant’s products prior to the actual grant of registration, the Panel is prepared to accept that on balance, in the circumstances, the Respondent registered the domain name with the Complainant’s distinctive product in mind.

In addition, a domain name that contains a common typographical error which the evidence indicates has been used to post sponsored links is not suggestive of use in good faith.

Considering all the circumstances of this case, the Panel is of the view that when the Respondent registered the Domain Name, it was well aware of the fact that the Complainant already registered the domain name <strivectin.com>, had registered and used the STRIVECTIN Marks. Therefore the adoption and use of the Domain Name could only have been done in bad faith. Thus, the Complainant has established to the Panel’s satisfaction that the Domain Name has been registered and is being used in bad faith. Therefore, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

Having established all three elements required under the Policy, the Panel concludes that relief shall be hereby granted. Accordingly, it is ordered that the <strivecton.com> Domain Name be transferred from the Respondent to the Complainant.

Hugues G. Richard
Sole Panelist

Dated: January 23, 2007