Peninsula Beauty Corporation v. La Peer Beauty
Claim Number: FA0808001219155
Complainant is Peninsula Beauty Corporation (“Complainant”), represented by Steven
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <beautydeals.com>, registered with Tucows Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 11, 2008.
On August 6, 2008, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <beautydeals.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 August 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 2, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 10, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <beautydeals.com> domain name is identical to Complainant’s BEAUTY DEALS mark.
2. Respondent does not have any rights or legitimate interests in the <beautydeals.com> domain name.
3. Respondent registered and used the <beautydeals.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Peninsula Beauty Corporation, is a business
that operates twelve retail stores and an online retail store that market a
variety of beauty products. Complainant
was incorporated in 1973 in the state of
Respondent registered its disputed domain name on June 9, 1999. Previously, Respondent’s disputed domain name did not resolve to an active website. Currently, Respondent’s disputed domain name resolves to a website offering links to products that compete with Complainant’s business. Respondent altered its use of the disputed domain name after Complainant sent Respondent a cease-and-desist letter. Additionally, after Complainant contacted Respondent inquiring about purchasing the disputed domain name, Respondent offered the disputed domain name for sale for $4,500.00.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint 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.”).
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.
Complainant registered its BEAUTY DEALS mark with the USPTO on August 15, 2006. Since the USPTO granted Complainant’s registration, Complainant’s rights in its BEAUTY DEALS mark date back to Complainant’s filing date of March 7, 2005 pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Additionally, Complainant alleges it had established common law rights in its BEAUTY DEALS mark dating back to 2002. Although Complainant may have established trademark rights in its mark prior to its 2005 filing date, Complainant has not provided any evidence it established common law rights in its mark before 2002. Since Respondent registered the disputed domain name in 1999, the Panel finds it unnecessary to make a conclusory finding regarding Complainant’s common law rights, because in any case they do not predate Respondent’s registration of the disputed domain name.
Complainant contends Respondent’s disputed domain name is
identical to its BEAUTY DEALS mark. The
disputed domain name merely omits a space and adds the generic top-level domain
“.com.” Since spaces are impermissible
characters and top-level domains are required elements of every domain name,
the Panel finds Respondent’s disputed domain name is identical to Complainant’s
mark pursuant to Policy ¶ 4(a)(i). See
Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that
the domain name <gaygames.com> is identical to the complainant's
registered trademark GAY GAMES); see
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not possess rights or legitimate interests in the disputed domain name. Complainant must present a prima facie case to support these allegations before the burden shifts to Respondent to prove otherwise. The Panel finds Complainant has presented an adequate prima facie case to support its allegations and Respondent has failed to respond to these proceedings. Therefore, the Panel may conclude Respondent does not possess rights or legitimate interests in the disputed domain name. The Panel, however, will examine the record and determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant alleges Respondent is not commonly known by the disputed domain name. The WHOIS information and record do not reflect Respondent is known by the <beautydeals.com> domain name, or that Complainant has authorized Respondent to use its BEAUTY DEALS mark. Therefore, the Panel finds Respondent is not commonly known by the disputed 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 the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Respondent’s disputed domain name previously resolved to an inactive website. The Panel finds Respondent’s previous failure to make an active use does not bestow rights or legitimate interests in the disputed domain name upon Respondent under Policy ¶ 4(a)(ii). See Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent failed to make an active use of the domain name); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”).
Respondent’s altered its use of the disputed domain name after receiving a cease-and-desist letter from Complainant. Respondent currently is using the disputed domain name to resolve to a website offering links to products that compete with Complainant’s business. The Panel finds Respondent’s current use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Additionally, Respondent offered to sell Complainant the disputed domain name for $4,500.00, which Complainant contends is in excess of Respondent’s out-of-pocket expenses. The Panel finds Respondent’s offer to sell the disputed domain name is evidence Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb. Forum Apr. 8, 2003) (finding evidence that the respondent lacked rights or legitimate interests in the disputed domain name after it sent several correspondences offering to sell its rights in the domain name in exchange for 1,500 shares of the complainant’s stock to the complainant); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant has used its BEAUTY DEALS mark in connection with its beauty product retail business. The earliest evidence Complainant provides for the use of its BEAUTY DEALS mark is the use of its <beautydeals.net> domain name in 2002. Complainant has not provided any evidence it possessed common law rights or other trademark rights in its BEAUTY DEALS mark prior to this date. Since the WHOIS page Complainant provided in its Complaint states that Respondent registered the disputed domain name on June 9, 1999, approximately three years before Complainant established rights in the mark, the Panel finds Respondent did not register the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
The Panel finds Policy ¶ 4(a)(iii) has not been satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <beautydeals.com> domain name REMAIN with Respondent.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 24, 2008
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