WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Carma Laboratories, Inc. v. Mike Bennet, Voice Corporation Case No. DME2010-0002 1. The Parties
Complainant is Carma Laboratories Inc. of Franklin, Wisconsin, United States of America, represented by Michael Best & Friedrich LLP, of Milwaukee, Wisconsin, United States of America.
Respondent is Mike Bennet, Voice Corporation of Wilmington, Delaware, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Mesh Digital Limited. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2010. On February 11, 2010, the Center transmitted by e-mail to Mesh Digital Limited a request for registrar verification in connection with the disputed domain name. On February 12, 2010, Mesh Digital Limited transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”)(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 Respondent of the Complaint, and the proceedings commenced on February 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 18, 2010.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on March 23, 2010. 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
Complainant states that it has used the CARMEX trademark in connection with lip balm since 1937 and that it is the owner of the following six federal trademark registrations in the United States (U.S.) that consist of or contain the word “Carmex”:
Mark Reg. No. Reg. Date Goods
CARMEX FOR-COLD-SORES
1,526,475
February 28, 1989
Lip balm for cold sores, fever blisters and chapped lips
CARMEX
2,093,176
September 2, 1997
Medicated lip balm for cold sores, fever blisters and chapped lips
CARMEX TRADE NAME REG.
3,601,619
April 7, 2009
Lip balm; medicated lip balm
CARMEX TRADE NAME REG.
3,601,627
April 7, 2009
Lip balm; medicated lip balm
CARMEX MOISTURE PLUS
3,632,589
June 2, 2009
Lip balm
CARMEX TRADE NAME REG. FOR COLD SORES ORIGINAL FORMULA
3,654,632
July 14, 2009
Lip balm; medicated lip balm
In support thereof, Complainant provided as annexes copies of registration certificates for each mark shown above, which hereafter are referred to collectively as the “CARMEX Trademark.”
Complainant further states that it is the registrant of the following domain names: , , , , , , , , , and .
Respondent registered the disputed domain name on July 19, 2008. According to a website printout provided as an annex by Complainant, Respondent is using this domain name in connection with a website that contains links to goods that are apparently competitive with Complainant's CARMEX brand lip balm, namely, links labeled “Natural Lip Balm Supply,” “Elegant Natural Cosmetics,” “Lip Pixi Boosters,” and “Buy Dior Lipstick,” among others.
On November 23, 2009, counsel for Complainant sent a letter to Respondent demanding that Respondent cease using the CARMEX Trademark and transfer the domain name to Complainant. On December 29, 2009, Respondent replied via e-mail stating, in relevant part: “I have no idea of what product you're talking about and my domain name was purchased for an automotive web site that I'm wanting to launch. I too have a trademark on the name - albeit, not in the USA, but this is not necessary as I don't live there.” 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The disputed domain name is confusingly similar to the CARMEX Trademark because “Respondent's domain name incorporates Complainant's CARMEX trademark in its entirety.”
- Respondent has no rights or legitimate interests in respect of the disputed domain name because “Respondent uses the domain name to host links designated as ‘Sponsored Listings' for which Respondent likely receives click-through fees when consumers follow these links to third-party websites”; “Respondent is not commonly known by the domain name”; “Respondent does not own any trademark registrations for the domain name or any portion thereof”; and “[t]he use of a domain name confusingly similar to Complainant's CARMEX Marks to falsely suggest a relationship with Complainant is not a non-commercial or fair use of the mark.”
- The disputed domain name has been registered and used in bad faith because “[a] legal presumption of bad faith arises when a respondent is aware, actually or constructively, of Complainant's famous and distinctive trademark”; “Respondent had constructive knowledge of Complainant's rights in the CARMEX Marks [given that] Complainant's use and common law rights in the CARMEX Marks preexist [Respondent's] domain name registration by approximately 70 years”; and “Respondent also has actual knowledge of Complainant's rights in the CARMEX Marks” as a result of Complainant's demand letter. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the CARMEX Trademark, and Respondent does not dispute the validity of the CARMEX Trademark.
As to whether the disputed domain name is identical or confusingly similar to the CARMEX Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “carmex”), as it is well-established that the top-level domain name (i.e., “.me”) should be disregarded for this purpose.
It is self-evident that the disputed domain name is identical to one of the CARMEX Trademarks, that is, U.S. Reg. No. 2,093,176. See, e.g., Regan Campbell Ward-McCann v. Site Services International, Richard Sorensen,WIPO Case No. D2008-0386 (finding the domain name identical to the trademark RCW “without the need for elaboration”).
Accordingly, the disputed domain name is confusingly similar to Complainant's CARMEX Trademark, and the Panel is convinced that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant alleges that, inter alia, Respondent has no rights or legitimate interests in respect of the disputed domain name because “Respondent uses the domain name to host links designated as ‘Sponsored Listings' for which Respondent likely receives click-through fees when consumers follow these links to third-party websites”; “Respondent is not commonly known by the domain name”; “Respondent does not own any trademark registrations for the domain name or any portion thereof”; and “[t]he use of a domain name confusingly similar to Complainant's CARMEX Marks to falsely suggest a relationship with Complainant is not a non-commercial or fair use of the mark.”
Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.
Accordingly, as a result of Complainant's allegations and without any evidence of Respondent's rights or legitimate interests in the disputed domain name, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
In this case, Complainant appears to allege that bad faith exists pursuant to paragraph 4(b)(iv) as a result of the “sponsored listings” on Respondent's website. Numerous panels have agreed with this conclusion in similar cases. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850 (“where… the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy”).
As to Respondent's assertion in its letter to Complainant that it purchased the disputed domain name “for an automotive web site that I'm wanting to launch” and that Respondent “ha[s] a trademark on the name,” the Panel finds these statements unsupported in the record. Furthermore, the Panel observes that Respondent's website continues to contain, even as of today, sponsored links for lip balm and related products and does not contain any links or other information regarding anything related to the automotive industry.
Therefore, the Panel is convinced that Complainant has proven the third element of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: April 6, 2010
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