Creative Hairdressers, Inc. v. Dynamic
Progressive Technologies, Inc.
Claim Number: FA0207000114772
PARTIES
Complainant
is Creative Hairdressers, Inc.,
Falls Church, VA (“Complainant”) represented by Kevin Oliveira, of
Odin, Feldman & Pittleman, P.C.
Respondent is Dynamic Progessive
Technologies, Inc., Washington, DC (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <salonplaza.com>,
registered with Verisign.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 3, 2002; the Forum received a hard copy of the Complaint
on July 8, 2002.
On
July 9, 2002, Verisign confirmed by e-mail to the Forum that the domain name <salonplaza.com> is registered
with Verisign and that Respondent is the current registrant of the name. Verisign has verified that Respondent is
bound by the Verisign 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
July 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 29,
2002 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@salonplaza.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
August 6, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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.” 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <salonplaza.com> domain
name is identical to Complainant’s SALON PLAZA mark, deviating only by the
deletion of a space and the addition of the generic top-level domain “.com.”
2. Respondent has not developed a purpose
for the <salonplaza.com> domain name, nor has Respondent stated
any demonstrable preparations to use the domain name in conjunction with a
legitimate website; thus, Respondent has no rights or legitimate interests in
respect of the subject domain name.
3. Respondent had knowledge of Complainant’s
rights in the SALON PLAZA mark prior to registering the <salonplaza.com>
domain name, and subsequently attempted to sell rights to the domain name
to Complainant; thus, Respondent registered and used the disputed domain name
in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant owns U.S. Federal Reg. No.
2,120,212 for the SALON PLAZA mark filed on April 13, 1995 and issued December
9, 1997. Complainant’s SALON PLAZA mark is listed on the Principal Register of
the U.S. Patent and Trademark Office (“USPTO”) and denotes Complainant’s
business, Creative Hairdressers, Inc., and is used in conjunction with services
related to hair salons and with the leasing of hair salon stations.
Complainant has grossed over $270,000,000
in revenue in 2001 and spent approximately $100,000 dollars in advertising and
promoting its SALON PLAZA mark.
Respondent registered the <salonplaza.com>
domain name on March 10, 2000. Complainant’s attempts to acquire the subject
domain name resulted in Respondent attempting to transfer rights to the domain
name for an amount in excess of $1,800. Respondent has not made any use of the <salonplaza.com>
domain name, and has not developed any stated purpose or website in conjunction
with its registration.
DISCUSSION
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 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.
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; 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.
Complainant has demonstrated its rights
in the SALON PLAZA domain name by registration of the mark with the USPTO and
continuous use of the mark in commerce since July 31, 1997.
Respondent’s <salonplaza.com> domain
name is identical to Complainant’s registered SALON PLAZA mark. Respondent’s
domain name deviates from Complainant’s mark only with the insubstantial
deletion of the space between the words that comprise Complainant’s SALON PLAZA
mark, and the addition of the generic top-level domain (“gTLD”) “.com.” Both
variations have been held to be insignificant when conducting a Policy ¶
4(a)(i) analysis because spaces are not permitted in domain name registrations
and gTLDs are required. See Hannover Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar); see also Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that
the domain name <gaygames.com> is identical to Complainant's registered
trademark GAY GAMES).
Accordingly, the
Panel finds that Policy ¶
4(a)(i) has been satisfied.
Respondent failed to submit a Response in
this proceeding, resulting in Complainant’s allegations going unopposed.
Therefore, the Panel is permitted to make all reasonable inferences in favor of
Complainant. See Vertical
Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (failure to respond allows all reasonable inferences of fact in
the allegations of Complainant to be deemed true); see also Talk City, Inc.
v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Additionally, when Respondent fails to
submit a Response to the Panel, and its rights and interests are not apparent,
it is presumed that Respondent lacks rights and legitimate interests in the <salonplaza.com>
domain name. See Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply to the Complaint).
While the burden of proof is on the
Complainant, Paragraph 4(c) of the Policy provides a Respondent with guidelines
of how to demonstrate its rights or legitimate interests in the contested
domain name. Because Complainant asserts and provides evidence supporting the
fact that Respondent holds no rights or legitimate interests, the burden shifts
to Respondent to demonstrate such rights and legitimate interests. Respondent
has not responded to Complainant’s allegations; thus, Respondent has not
demonstrated rights or legitimate interests in the domain name. See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts
that Respondent has no rights or legitimate interests in respect of the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name).
Complainant’s investigation reveals that
since registration of the disputed domain name on March 10, 2000, Respondent
has made no effort or attempt to develop a purpose or a corresponding website.
Respondent’s passive holding of the domain name fails to demonstrate any rights
or legitimate interests under Policy ¶ 4(a)(ii). Respondent has had ample
opportunity to develop a function for the subject domain name by holding the
domain name registration for over two years. See Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding
no rights or legitimate interests where “Respondent registered the domain name
and did nothing with it”); see also Ziegenfelder
Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that
failure to provide a product or service or develop the site demonstrates that
Respondents have not established any rights or legitimate interests in the
domain name); see also LFP, Inc. v. B & J Props., FA 109697 (Nat.
Arb. Forum May 30, 2002) (recognizing that in certain instances excusable
delays will inevitably arise, but noting that those delays must be quantifiable
and limited; they cannot extend indefinitely).
Complainant’s Submission also provides
unrefuted evidence that Respondent sought to transfer rights in the domain name
for an amount that exceeded $1,800. Respondent’s willingness to sell its
interests in the domain name evidences its lack of rights and legitimate
interests in the domain name. No rights or legitimate interests exist when
Respondent has made no use of the domain name at issue, other than to attempt
to sell it for profit. See Hewlett-Packard
Co. v. High Perf. Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000)
(finding no rights or legitimate interests where the Respondent registered the
domain name with the intention of selling it); see also Cruzeiro Licenciamentos Ltda v. Sallen,
D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do
not exist when one holds a domain name primarily for the purpose of marketing
it to the owner of a corresponding trademark).
Lastly, Respondent’s connection to the
domain name has not been supported by any submissions or evidence. Due to the
aforementioned factors, and because Respondent’s domain name reflects
Complainant’s exact registered SALON PLAZA mark, it is unlikely that Respondent
is commonly known by the <salonplaza.com> domain name pursuant to
Policy ¶ 4(c)(ii). See Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that Respondent does not have rights in a domain name when Respondent is not
known by the mark); see also
Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14,
2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Accordingly, the Panel has determined
that Respondent has no rights or legitimate interests in the subject domain
name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Bad faith occurs when constructive
knowledge of a trademark exists and a party effectuates a registration of a
domain name without legitimate interests in the trademark. Respondent was
placed on notice as to Complainant’s preexisting rights in the SALON PLAZA mark
by Complainant’s listing on the Principal Register of the USPTO. Respondent’s
subsequent registration of the infringing domain name despite this knowledge is
evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Victoria’s Cyber Secret
Ltd. P’ship v. V Secret Catalogue, Inc.,
161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register
registration [of a trademark or service mark] is constructive notice of a claim
of ownership so as to eliminate any defense of good faith adoption” pursuant to
15 U.S.C. § 1072); see also Entrepreneur Media, Inc. v. Smith,
279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse").
Uncontested circumstances indicate that
Respondent acquired the disputed domain name primarily for the purpose of
selling, renting or otherwise transferring the domain name registration; thus,
Respondent’s behavior evidences bad faith registration and use under Policy ¶
4(b)(i). Complainant’s Submission reveals that Respondent attempted to monetarily
benefit from the sale of its rights in the domain name, demanding over $1,800,
a purchase price in excess of out-of-pocket costs related to the domain name. See
Am. Online, Inc. v. Avrasya
Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000)
(finding bad faith where Respondent offered domain names for sale); see also
World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000)
(finding that Respondent used the domain name in bad faith because he offered
to sell the domain name for valuable consideration in excess of any out of
pocket costs); see also Prudential Ins. Co. of Am.
v. TPB Fin. a/k/a B. Evans, FA 105218
(Nat. Arb. Forum Apr. 8, 2002) (finding bad faith registration and use pursuant
to Policy ¶ 4(b)(i) where Respondent offered to sell the domain name for $900).
Respondent’s passive holding
of the domain name evidences bad faith under Policy ¶ 4(a)(iii). Respondent’s
failure to develop a website or supply a stated purpose in connection with the
domain name raises the inference of bad faith registration and use. See DCI
S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of
the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see
also Mondich & Am. Vintage Wine
Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the
Respondent’s failure to develop its website in a two year period raises the
inference of registration in bad faith).
Accordingly, the Panel finds that Policy
¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under
the ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <salonplaza.com> domain name be TRANSFERRED from
Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 20, 2002
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