Mario Tricoci Hair Salons & Day Spas, Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1301001479331
Complainant is Mario Tricoci Hair Salons & Day Spas, Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mariotricocicoupons.com>, registered with Internet.bs 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2013; the National Arbitration Forum received payment on January 9, 2013.
On January 13, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <mariotricocicoupons.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs 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 January 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2013 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@mariotricocicoupons.com. Also on January 14, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
i. Respondent is not commonly known by the disputed domain name.
ii. Respondent’s disputed domain name is linked to a criminal phishing website.
iii. Respondent’s disputed domain name is linked to competing commercial websites.
iv. Respondent is passively holding the disputed domain name.
i. Respondent had the clear goal to disrupt the business of the previously-existing MARIO TRICOCI website by diverting Internet traffic meant for Complainant’s website to Respondent’s own website.
ii. Respondent registered the disputed domain name with the intent to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with Complainant’s mark.
iii. Respondent registered the disputed domain name with the intent to attract, for commercial gain, Internet users to the disputed domain name by phishing
iv. Respondent is passively holding the disputed domain name.
v. Respondent undoubtedly registered the disputed domain name in bad faith with actual knowledge of Complainant’s rights in its MARIO TRICOCI mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Mario Tricoci Hair Salons & Day Spas, Inc. who list its address as Phoenix , AZ, USA. Complainant first used its mark MARIO TRICOCI in 1987 and has continuously used it since that time in connection with its business of providing a broad spectrum of personal care services. Complainant registered its mark and related marks and has garnered a great reputation in the beauty, spa and personal care industries where Complainant operates 18 salons and spas under the Mario Tricoci and Tricoci Too names.
Respondent is Fundacion Private Whois Domain Administrator who list its address as Zona 15, Panama. The disputed domain was registered by Respondent with a registrar who lists its address as Nassau N-4892, Bahamas. Respondent registered the <mariotricocicoupons.com> domain name on May 10, 2012.
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."
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.
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.”).
Complainant, Mario Tricoci Hair Salons & Day Spas, Inc., asserts that it is well-known in the beauty, spa, and personal care industries. Complainant contends that it operates 18 salons and spas under the “Mario Tricoci” and “Tricoci Too” names. Complainant provides evidence that it is the owner of trademark registrations with the USPTO for the MARIO TRICOCI mark (Reg. No. 2,882,038, registered September 7, 2004) and for the MARIO TRICOCI TOO mark (Reg. No. 2,882,037, registered September 7, 2004). See Complainant’s Exhibit 3. The Panel finds that although Respondent appears to reside in Panama, Policy ¶ 4(a)(i) and UDRP precedent only require that Complainant establish its rights in the mark in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, the Panel finds that Complainant’s registration of the MARIO TRICOCI mark with the USPTO is sufficient to establish its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <mariotricocicoupons.com> domain name is confusingly similar to Complainant’s mark because it is compromised of the MARIO TRICOCI mark in its entirety and contains the generic or descriptive term “coupons.” The Panel finds that the addition of a generic or descriptive term does not eliminate confusing similarity between Respondent’s domain name and Complainant’s mark under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).
The Panel notes that Respondent removes the space in Complainant’s MARIO TRICOCI mark and adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. The Panel finds that the addition of a gTLD and the removal of a space from the mark are inconsequential to a Policy ¶ 4(a)(i) analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Thus, the Panel concludes that Respondent’s <mariotricocicoupons.com> domain name is confusingly similar to Complainant’s MARIO TRICOCI mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name identifies “Fundacion Private Whois / Domain Administrator” as the registrant. See Complainant’s Exhibit 2. Complainant argues that Respondent’s WHOIS information bears no similarity to the MARIO TRICOCI mark or “MARIOTRICOCICOUPONS.” Complainant contends that it has not authorized Respondent to use its MARIO TRICOCI mark. The Panel notes that Respondent provides no evidence showing that it is known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent’s disputed domain name is linked to a criminal phishing website. Complainant argues that Respondent’s disputed domain name, when entered into a web browser, was hosting a criminal phishing website which offered a fraudulent coupon and collected personal information from Internet users. See Complainant’s Exhibits 9 and 10. The Panel finds that Respondent’s use of the disputed domain name to phish for Internet users personal information demonstrates that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant argues that after Respondent used the disputed domain name to conduct a criminal phishing scheme, Respondent used the disputed domain name to link to competing commercial websites. Complainant contends that Respondent is using the disputed domain name to host another website, a website that linked to offers from competing personal care services. The Panel notes that Respondent’s disputed domain name resolves to a website featuring links for unrelated coupons, such as “PRINTABLE FREE COUPONS,” “(FREE) DOG FOOD COUPONS,” “LOCAL COUPONS,” and others. See Complainant’s Exhibit 11. Complainant argues that consumers are likely to be confused that the websites and the links at the disputed domain name are approved of, sponsored by, or otherwise associated with Complainant and its personal care services because of the reputation of the MARIO TRICOCI brand. The Panel finds that Respondent’s use of the disputed domain name for offering unrelated coupons does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
Complainant argues that Respondent is passively holding the disputed domain name. Complainant contends that Respondent’s disputed domain name currently hosts no content. The Panel finds that the failure to make an active use of the disputed domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or a Policy ¶ 4(c)(iii) legitimate noncommerical or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that Respondent had the clear goal to disrupt the business of the previously-existing MARIO TRICOCI website by diverting Internet traffic meant for Complainant’s website to Respondent’s own website. Complainant contends that Respondent registered the disputed domain name with the intent to trade off the Complainant’s good will in the well-known MARIO TRICOCI mark. Additionally, Complainant argues that Respondent is using the disputed domain name to link to websites that are in open competition with Complainant’s website, as Complainant’s and Respondent’s websites both promoted or linked to websites promoting personal care services. See Complainant’s Exhibit 11. The Panel finds that Respondent’s use of the disputed domain name to attract users to a commercial directory website disrupts Complainant’s business under Policy ¶ 4(b)(iii). See 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 registered the disputed domain name with the intent to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with Complainant’s mark. Complainant asserts that Respondent registered a confusingly similar domain name and is hosting a website to provide competing services and link to competing websites. The Panel notes that Respondent’s disputed domain name resolves to a website featuring hyperlinks for grocery coupons, among other websites. See Complainant’s Exhibit 11. Complainant contends that consumers are likely to be confused when they see the disputed domain name because they will believe that the website at the disputed domain name and its monetized links are approved of, sponsored by, or otherwise associated with MARIO TRICOCI. The Panel finds that Respondent’s use of the disputed domain name to attract Internet users, for Respondent’s own commercial gain, shows bad faith registration and use under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant asserts that Respondent registered the disputed domain name with the intent to attract, for commercial gain, Internet users to the disputed domain name so that Respondent could phish for the personal information of those users. Complainant argues that Respondent used the disputed domain name to impersonate Complainant to offer a fraudulent coupons in exchange for visitors’ personal information. See Complainant’s Exhibits 9 and 10. The Panel finds that Respondent’s use of the disputed domain name to phish for Internet users personal information constitutes bad faith under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).
Complainant contends that Respondent is currently passively holding the disputed domain name. Complainant argues that Respondent’s disputed domain name currently hosts no content. The Panel finds that Respondent’s inactive holding of a disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <mariotricocicoupons.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 24, 2013
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