Tammy Upwall and Michael
Upwall d/b/a Got Beauty v. Kam Yaghobian d/b/a Got beauty products
Claim Number: FA0712001122960
PARTIES
Complainant is Tammy Upwall and Michael Upwall d/b/a Got
Beauty (“Complainant”), represented
by R. Parrish Freeman, of Workman Nydegger,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gotbeautyproducts.com>, registered
with Schlund
+ Partner AG.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 20, 2007; the
National Arbitration Forum received a hard copy of the Complaint on December 26, 2007.
On December 21, 2007, Schlund + Partner AG confirmed by e-mail to the
National Arbitration Forum that the <gotbeautyproducts.com> domain name
is registered with Schlund + Partner AG
and that the Respondent is the current registrant of the name. Schlund +
Partner AG has verified that Respondent is bound by the Schlund + Partner AG registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On January 11, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 31, 2008 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@gotbeautyproducts.com
by e-mail.
A timely Response was received and determined to be complete on January 31, 2008.
An timely Additional Submission was received on February 5, 2008.
On February 7, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed John J. Upchurch as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that: (1) Respondent has registered the Domain
Name, which is identical to and/or confusingly similar to the GOT BEAUTY mark
in which Complainant has rights; (2) Respondent has no rights or legitimate
interests in the Domain Name; and (3) Respondent has registered and is using
the Domain Name in bad faith.
B. Respondent
Respondent
contends that: (1) Respondent has a legitimate interest in its domain name of
<gotbeautyproducts.com>;
(2) Respondent did not register or use its domain name, <gotbeautyproducts.com>,
in bad faith; and (3) The domain name is not
identical and/or confusingly similar to a mark in which Complainant has rights.
C. Additional Submissions
Complainant asserts that Respondent essentially admits the domain name
is confusingly similar to Complainant’s mark; Respondent has no rights or
legitimate interests; and Respondent is using the domain name in bad faith as
there is evidence of selling product below the manufacturer’s suggested retail
price, a contractual violation as between those parties.
FINDINGS
The Panel finds that Complainant has not
established that Respondent did not have rights and legitimate interests in the
domain name <gotbeautyproducts.com>,
or that the same was being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(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.
Complainant asserts rights in the GOT BEAUTY mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,246,266 issued May 29, 2007). The Panel finds that Complainant’s USPTO trademark registration confers rights in the GOT BEAUTY mark to Complainant pursuant to Policy ¶ 4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).”). Furthermore, the Panel determines that Complainant’s rights to the mark under Policy ¶ 4(a)(i) date back to the filing date of Complainant’s trademark application, which is June 30, 2005 and therefore predate Respondent’s registration of the <gotbeautyproducts.com> domain name. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of the complainant’s trademark rights date back to the application’s filing date).
Complainant also alleges that its GOT BEAUTY mark has acquired secondary meaning as an exclusive indicator of Complainant’s business. Complainant states that it has used the mark in commerce since 2000, and this is supported by the date of first use in commerce listing of August 2000 on Complainant’s USPTO registration for the GOT BEAUTY mark. Furthermore, Complainant submits evidence of three separate articles printed in March 2005 in People Magazine, Prevention Magazine, and the New York Daily News that commend Complainant’s business located at the website that resolves from the <gotbeauty.com> domain name for offering superior beauty products. Therefore, the Panel finds that, pursuant to Policy ¶ 4(a)(i), Complainant has established sufficient secondary meaning among customers searching for Complainant’s products to confer common law rights in the GOT BEAUTY mark dating back to August 2000. See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
Complainant asserts that the <gotbeautyproducts.com> domain name is confusingly similar to its GOT BEAUTY mark. The disputed domain name contains the GOT BEAUTY mark in its entirety, which Complainant alleges is the dominant portion of the disputed domain name. Complainant argues that the additions of the generic term “products” and the generic top-level domain (“gTLD”) “.com” do not sufficiently distinguish the <gotbeautyproducts.com> domain name from Complainant’s mark. Therefore, the Panel concludes that Respondent’s <gotbeautyproducts.com> domain name is confusingly similar to the GOT BEAUTY mark pursuant to Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business).
Respondent contends that the <gotbeautyproducts.com> domain name is comprised of
generic terms, and that Complainant is not exclusively associated with the GOT
BEAUTY mark. Therefore, Respondent
alleges that the <gotbeautyproducts.com>
domain name is not confusingly similar to Complainant’s mark. However, the Panel finds that such a determination is not necessary under Policy ¶
4(a)(i) since this portion of the Policy considers only whether Complainant has
rights in the mark and whether the disputed domain name is identical or
confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7,
2007) (finding that because the complainant had received a trademark
registration for its VANCE mark, the respondent’s argument that the term was
generic failed under Policy ¶ 4(a)(i)); see
also David Hall Rare Coins v. Tex. Int’l Prop.
Assocs., FA 915206 (Nat. Arb. Forum
Apr. 9, 2007) (“Respondent’s argument that each individual word in the
mark is unprotectable and therefore the overall mark is unprotectable is at
odds with the anti-dissection principle of trademark law.”).
The Panel finds <gotbeautyproducts.com> to be confusingly similar to
Complainant’s GOT BEAUTY mark.
Respondent asserts that it is commonly known by the <gotbeautyproducts.com> domain name. The WHOIS information identifies Respondent
as “Kam Yaghobian c/o Got beauty products,” and Respondent submitted evidence
that it registered “Got Beauty Products” as the name of its business with the
Respondent alleges
that its use of the <gotbeautyproducts.com> domain name does not
compete with Complainant’s business.
While Complainant offers generic, third-party beauty products for sale,
Respondent specializes in offering Cellex and Revitalash products. Respondent contends that customers have come
to recognize Respondent as being one of the leading distributors of these
products, and specifically seeks out Respondent for this purpose. Therefore, the Panel finds that Respondent’s
use of the <gotbeautyproducts.com>
domain name is in connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i). See
Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum
Feb. 13, 2001) (stating that “Respondent is using the domain <groceryoutlet.com>
for a website that links to online resources for groceries and similar goods.
The domain is therefore being used to describe the content of the site,” as
evidence that the respondent was making a bona fide offering of goods or
services with the disputed domain name); see
also VeriSign Inc. v. VeneSign
The Panel holds that
Complainant has not established a prima facie case in support of its
arguments that Respondent lacks rights and legitimate interests under Policy ¶
4(a)(ii). See Terminal Supply, Inc. v.
HI-LINE ELECTRIC, FA
746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not
satisfactorily meet its burden and as a result found that the respondent had
rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug.
9, 2006) (finding that the respondent overcame the complainant’s burden by
showing it was making a bona fide offering of goods or services at the
disputed domain name).
As the Panel concludes that Respondent has rights or legitimate interests in the <gotbeautyproducts.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
John
J. Upchurch, Panelist
Dated: February 21, 2008
NATIONAL ARBITRATION FORUM
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page