Creative Hairdressers, Inc. v. Dynamic Progressive Technologies, Inc.
Claim Number: FA0207000114772
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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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