WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Tacitica International, Inc. v. YouCanSave.com, Inc.

Case No. D2002-0018

Complainant, Tactica International, Inc., is a Nevada corporation located in New York, New York, USA.

Respondent, YouCanSave.com, Inc., with an address in Fremont, California, USA.

The domain name at issue is <epilstopspray.com> (the Domain Name).

The registrar is Catalog.com, Inc., 640 International Parkway, Suite 2200, Plano, TX 75093.

The Complaint was received on January 9, 2002.

Notification of the Complainant was sent to Respondent on January 31, 2002. Notification of Default was send on February 19, 2002. No Answer or other Response has been submitted by Respondent.

Mark V. B. Partridge was appointed Sole Panelist on March 19, 2002.

The Panel finds that the actions of WIPO comply with the Policy, Rules and Supplemental Rules applicable to this proceeding, and that Respondent is in default.

Complainant, through its subsidiary IGIA Direct, Inc., uses the marks EPIL-STOP and EPIL-STOP AND SPRAY for hair removal products. The EPIL-STOP mark was registered on June 2, 1998, for depilatory lotions and creams, Reg. No. 2,162,229, based on first use as early as January 1, 1996. Complainant has also registered various domain names containing the EPIL mark, including the domain name <epilstopandspray.com>, which is in use for a web site promoting Complainant's EPIL-STOP spray depilatory.

Respondent registered the Domain Name on October 26, 2001. Respondent uses the Domain Name for a web site that sells Complainant's products, although Respondent is not a licensee or authorized distributor of Complainant.

Like Complainant's web site, Respondent's web site promotes the EPIL-STOP spray depilatory. Respondent's home page is headed "Carlita's Epil Stop from IGIA." A linked page identifies Respondent as "one of IGIA's top independent distributors."

A.Complainant

Complainant contends that the Domain Name is confusingly similar to a mark in which Complainant has rights; that the Respondent has no right or legitimate interest in the Domain Name; and that the Domain Name was registered in bad faith.

B.Respondent

Respondent has failed to contest Complainant's claims.

In the event of a default, Paragraph 14 of the Rules provides that "the Panel shall draw such inferences therefrom as it considers appropriate" and proceed to decision. Here, Respondent has failed to answer and is therefore in default. As a domain name registrant, Respondent has a contractual obligation to submit to these proceedings. Paragraph 4 of the Policy, which is incorporated into the Registration contract, specifically states that the Registrant is "required to submit to a mandatory administrative proceeding" in the event of an applicable dispute under the Policy. Under these circumstances, I believe it is appropriate to presume from the Registrant's default after notice that the Registrant does not dispute the facts presented by the Complainant.

Based on the facts presented, I find that the Domain Name is confusingly similar to a mark in which Complainant has rights. Complainant has shown rights in the mark EPIL STOP through use and registration. SPRAY is an apt generic term for the product and therefore increases the likelihood of confusion between the Domain Name and the Complainant's mark. It is also apparent that Respondent was aware of Complainant's use and rights in the mark EPIL STOP and that Respondent uses the Domain Name to attract Internet users to her site where she sells Complainant's product.

The Policy indicates that a registrant may have a legitimate interest in a domain name if it was making use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. Here, it appears that Respondent has used the Domain Name to offer goods for sale. That use, however, should not be considered bona fide if it is a deliberate infringement of Complainant's rights.

The Policy also indicates that a registrant may have a legitimate interest in a domain name if it is making fair use of the domain name. Here, it is clear that Respondent use the Domain Name as a nominative reference to Complainant's product. Nominative references constitute fair use if only so much of the mark is used as is reasonably necessary to identify the product or service and if the users do nothing to suggest sponsorship or endorsement by the trademark holder. The New Kids on the Block, v. News America Publishing, Inc., 971 F.2d 302 (9^th Cir. 1992).

I find that Respondent's use exceeds the scope of permissible fair use. First, it is not necessary that Respondent use Complainant's mark in its domain name. The business is known by the name "Carlita's". It would be more appropriate for Respondent to use a domain name comprised of the name "Carlita's" and to limit the use of Complainant's mark to text within the web site. Second, the use of the Domain Name and the web site create confusion as to whether or not Respondent is authorized or licensed by Complainant. Deep within the web site is indication that Respondent is an "independent" distributor. This is insufficient avoid the confusion over authorization or sponsorship created by the Domain Name and home page. Based on the facts presented, I find that Respondent lacks any right or legitimate interest in the Domain Name.

Respondent has not denied Complainant's allegation that the Domain Name has been registered and used in bad faith. The Domain Name appears to be a deliberate attempt to attract for commercial gain Internet users to Respondent's web site by creating confusion as to Complainant's authorization or approval of Respondent's web site. Although users will not be confused about the product available at Respondent's site, since the product appears to be genuine, its likely users will mistakenly believe the site is licensed or operated by Complainant. I believe Respondent's deliberate attempt to benefit commercially from that confusion constitutes bad faith registration and use under the Policy.

For the reasons stated above, Complainant's request for transfer of the Domain Name <epilstopspray.com> is granted.