Advanced Institute of Hair Design, Inc., Beauty Schools, Inc. and One Ten, Inc. v. Pantages Inc./Pantages
Claim Number: FA1110001413494
Complainant is Advanced Institute of Hair Design, Inc., Beauty Schools, Inc. and One Ten, Inc. (“Complainant”), represented by Daniel R. Johnson of Ryan Kromholz & Manion, S.C., Wisconsin, USA. Respondent is Pantages Inc / Pantages (“Respondent”), Venezuela.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vicibeauty.com>, registered with Power Brand Center Corp.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2011; the National Arbitration Forum received payment on October 28, 2011.
On November 1, 2011, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <vicibeauty.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. 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 November 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 2011 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@vicibeauty.com. Also on November 1, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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" 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 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 <vicibeauty.com> domain name is confusingly similar to Complainant’s VICI BEAUTY SCHOOL mark.
2. Respondent does not have any rights or legitimate interests in the <vicibeauty.com> domain name.
3. Respondent registered and used the <vicibeauty.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Advanced Institute of Hair Design, Inc., Beauty Schools, Inc. and One Ten, Inc., allege rights in three different trademarks registered with the United States Patent and Trademark Office (“USPTO”) and relating to the VICI mark:
VICI Reg. No. 2,903,464 registered November 16, 2004;
VICI CAPILLI Reg. No. 2,903,465 registered November 16, 2004; &
VICI BEAUTY SCHOOL Reg. No. 3,015,363 registered November 15, 2005.
Respondent, Pantages Inc./Pantages, registered the <vicibeauty.com> domain name on February 23, 2010. The disputed domain name resolves to a website featuring a directory of pay-per-click links to third-party websites, including competitors of Complainant.
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.
Preliminary Issue: Multiple Complainants
In the instant proceeding, Complainants, Advanced Institute of Hair Design, Inc., Beauty Schools, Inc., and One Ten, Inc., are bringing this Complaint together. UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Complainants argue that all three entities can claim rights to the disputed domain name and bring this Complaint jointly because the three entities share ownership of the asserted trademarks. Complainant notes that for each of the three trademarks described in the Complaint, all three Complainants are listed as the owners of record. The Panel finds that this relationship is adequate to establish a sufficient nexus or link between the Complainants. Throughout the rest of this decision, Complainants will be collectively referred to as “Complainant.”
Complainant owns rights in three different trademarks registered with the USPTO and relating to the VICI mark. In Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006), a past panel found that a USPTO trademark registration satisfied the Policy ¶ 4(a)(i) requirement that a Complainant prove its rights in the mark. A prior panel in Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), held that proof of registration in the country of respondent’s residence was not necessary under the Policy. Based on these determinations, the Panel here concludes that Complainant has proven its rights in the mark for Policy ¶ 4(a)(i) with its USPTO trademark registrations, even though Respondent is located in Venezuela.
Because Respondent’s <vicibeauty.com> domain name only removes the space between the terms of the mark, deletes the term “school,” and adds the generic top-level domain, Complainant contends that the disputed domain name is confusingly similar to Complainant’s VICI BEAUTY SCHOOL mark. The Panel in Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), found that spaces are impermissible in domain names and gTLDs are required, so those changes do not affect the confusingly similar determination. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the panel also concluded that the deletion of the term “personal” from the complainant’s mark did not prevent a finding of confusing similarity. In accordance with these panel decisions, the Panel determines that Respondent’s <vicibeauty.com> domain name is confusingly similar to Complainant’s VICI BEAUTY SCHOOL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. According to Policy ¶ 4(a)(ii), Complainant must support this contention sufficiently and present a prima facie case against Respondent before the burden to demonstrate rights and legitimate interests shifts to Respondent. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds Complainant has adequately presented a prima facie case in this instance. Respondent’s failure to respond to the Complaint supports a finding by the Panel that Respondent has not met its burden and therefore has not demonstrated rights and legitimate interests in the disputed domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to Policy ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inference’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). The Panel elects, however, to determine whether Respondent possesses any rights or legitimate interests in the disputed domain name according to Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <vicibeauty.com> domain name because there is no evidence of any nominal association between Respondent and the disputed domain name in the WHOIS record, which identifies the registrant as “Pantages Inc./Pantages.” The Panel finds that without other evidence from Respondent indicating a connection, Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests according to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent uses the <vicibeauty.com> domain name to refer Internet users to a directory of pay-per-click links diverting Internet users to unrelated and sometimes competing third-party websites. This function is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant makes no specific allegations under Policy ¶ 4(b)(iii) regarding Respondent’s use of the <vicibeauty.com> domain name. Complainant does, however, allege that some of the links advertised on the resolving website redirect Internet users to third-party websites in competition with Complainant. Respondent’s actions therefore disrupt Complainant’s business by facilitating competition with Complainant under Complainant’s mark, which demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant argues that Respondent uses the <vicibeauty.com> domain name to intentionally attract consumers seeking Complainant and then create confusion regarding Respondent’s affiliation with Complainant. The Panel presumes that the links featured on Respondent’s resolving websites are pay-per-click links that generate revenue for Respondent whenever Internet users are diverted, via the links, to the third-party websites. As a result, the Panel concludes that Respondent operates the disputed domain name in this way for its own profit, which indicates bad faith registration and use according to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vicibeauty.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 14, 2011
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