Ulta Salon, Cosmetics & Fragrance, Inc. v. Total gaming solution B. V.
Claim Number: FA2109001964015
Complainant is Ulta Salon, Cosmetics & Fragrance, Inc. (“Complainant”), represented by Caitlin R. Byczko of Barnes & Thornburg LLP, Illinois, USA. Respondent is Total gaming solution B. V. (“Respondent”), Curacao.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ultaweb.com>, registered with NameCheap, Inc.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 16, 2021; the Forum received payment on September 16, 2021.
On September 16, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <ultaweb.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ultaweb.com. Also on September 20, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 15, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Ulta Salon, Cosmetics & Fragrance, Inc., is a beauty retailer selling cosmetics, fragrance, skin, hair care products, and salon services. Complainant maintains registration of its ULTA mark with the United States Patent and Trademark Office (USPTO). The disputed domain name, <ultaweb.com>, is identical or confusingly similar to Complainant’s ULTA mark because it wholly incorporates Complainant’s ULTA mark while adding in the generic term “web” and the “.com” generic top-level domain (“gTLD”) to form the domain name.
Respondent does not have any rights or legitimate interests in the <ultaweb.com> domain name because Respondent is not commonly known by the disputed domain name nor has Respondent been authorized to use Complainant’s ULTA mark. Additionally, Respondent is not using the <ultaweb.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent hosts pay-per-click advertisements to third-parties and advertisements related to Complainant’s business.
Respondent registered and uses the <ultaweb.com> in bad faith because Respondent disrupts Complainant’s business by hosting pay-per-click hyperlinks. Further, Respondent acted with constructive and/or actual knowledge of Complainant’s rights in the ULTA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <ultaweb.com> domain name.
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."
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant argues that the <ultaweb.com> domain name is identical or confusingly similar to Complainant’s ULTA mark because it wholly incorporates Complainant’s ULTA mark while adding a generic term and the “.com” gTLD to form the domain name. A mark may be found to be identical or confusingly similar to a complainant’s mark, under Policy ¶ 4(c)(ii), despite the addition of a generic term. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Broadcom Corp. v. Domain Depot, FA 96854 (Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). The generic term added here is “web.” The Panel finds that the <ultaweb.com> domain name is confusingly similar to Complainant’s ULTA mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds that Complainant has made a prima facie case.
Complainant first argues Respondent does not have any rights or legitimate interests in the <ultaweb.com> domain name because Respondent is not commonly known by the disputed domain name nor has Respondent been authorized to use Complainant’s ULTA mark. Under Policy ¶ 4(c)(ii), a respondent may be found to not be commonly known by the disputed domain name where the identifying WHOIS information is unrelated to a domain name and where a respondent is not authorized to use a complainant’s mark. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The WHOIS information identifies the registrant as “Total gaming solution B. V.” See Registrar Verification Email. Furthermore, Complainant asserts that Respondent is not licensed or otherwise authorized to use Complainant’s ULTA mark. The Panel finds that Respondent is not commonly known by the <ultaweb.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues Respondent is not using the <ultaweb.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent uses the <ultaweb.com> domain name to host pay-per-click advertisements. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to host pay-per-click hyperlinks or advertisements to third-parties does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). The resolving website for the disputed domain name displays a variety of links unrelated to Complainant, such as links for “Retail Store,” “Grocery Store,” “Grocery Shopping,” and “Walmart Grocery Shopping.” Other links are related to Complainant such as “Ulta Beauty Store,” “Ulta Beauty Coupon,” “Ulta Beauty,” “Ulta Beauty Hair Salon,” etc. and Complainant asserts that when clicked some of these links resolve to the website of Complainant’s competitors. The Panel finds that Respondent is not using the <ultaweb.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues Respondent registered and uses the <ultaweb.com> domain name in bad faith because Respondent disrupts Complainant’s business by hosting pay-per-click hyperlinks and advertisements on the resolving website for the disputed domain name. Using a confusingly similar domain name to divert users away from a complainant’s website and to a respondent’s website where it hosts monetized hyperlinks is evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”). Complainant provides a screenshot showing the disputed domain name resolves to a webpage featuring pay-per-click hyperlinks, some of which directly compete with the goods and services offered by Complainant. This is evidence that Respondent registered and uses the <ultaweb.com> domain name in bad faith.
Complainant argues Respondent acted with constructive and/or actual knowledge of Complainant’s rights in the ULTA mark. While constructive knowledge is insufficient for a finding of bad faith, per Policy ¶ 4(a)(iii), actual knowledge may be found where a respondent uses the well-known mark of a complainant to advertise products similar to a complainant. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also G.D. Searle & Co. v. 24-7-Commerce.com, FA 114707 (Forum July 31, 2002) (“It is evident that Respondent knew of Complainant’s rights in the CELEBREX mark since Complainant coined [the term “Celebrex”] and Respondent uses the mark in conjunction with marks of Complainant’s competitors.”). Complainant’s marks are strongly associated with beauty products. Furthermore, Respondent used the <ultaweb.com> domain name to advertise links related to Complainant’s ULTA mark and Complainant’s own products and services. The Panel finds that Respondent acted with actual knowledge of Complainant’s mark and registered and uses the <ultaweb.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <ultaweb.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
October 22, 2021
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