national arbitration forum

 

DECISION

 

International Designs Corporation v. Justin Kline

Claim Number: FA1303001488282

 

PARTIES

Complainant is International Designs Corporation (“Complainant”), represented by Darren Spielman of Kain & Associates, Attorneys at Law, P.A., Florida, USA.  Respondent is Justin Kline (“Respondent”), Tennessee, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hotheadshairextensions.com>, registered with TUCOWS, INC.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically March 1, 2013; the National Arbitration Forum received payment March 1, 2013.

 

On March 4, 2013, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <hotheadshairextensions.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name.  TUCOWS, INC. verified that Respondent is bound by the TUCOWS, INC. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On March 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 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@hotheadshairextensions.com.  Also on March 7, 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 April 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

  1. Complainant makes the following allegations in this proceeding:

 

    1. The disputed domain name is identical to or confusingly similar to a mark in which Complainant has rights.

                                          i.    Complainant holds a federal trademark registration with the United States Patent and Trademark Office (“USPTO”) for the HOT HEADS HAIR EXTENSIONS trademark (Reg. No. 3,636,198 registered June 9, 2009).

                                         ii.    Respondent registered the <hotheadshairextensions.com> domain name on February 7, 2012.

                                        iii.    The addition of the generic top-level domain (“gTLD”) “.com” and the deletion of spaces are irrelevant in determining this factor.

                                       iv.    The disputed domain name contains the HOT HEADS HAIR EXTENSIONS trademark in its entirety.

    1. Respondent has no rights to or legitimate interests in the disputed domain name.

                                          i.    Respondent is not commonly known by the disputed domain name, evidenced by the WHOS information and the fact that Respondent is not a licensee of Complainant.

                                         ii.    Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The resolving webpage purports to be an informational website about hair extensions generally, but in fact includes extensive pay-per-click links to Complainant’s competitors.

                                        iii.    Respondent has offered to sell the disputed domain name to Complainant.

    1. Respondent registered and is using the disputed domain name in bad faith.

                                          i.    Respondent is using the disputed domain name to disrupt Complainant’s business for its own benefit, as is clear by the offer to sell and links to competing businesses.

                                         ii.    Respondent is using the disputed domain name to intentionally attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark, in order to commercially benefit through pay-per-click links.

                                        iii.    Respondent registered the disputed domain name for the purpose of selling the domain name to Complainant.

 

  1. Respondent did not submit a Response to the Complaint.

 

FINDINGS

 

Complainant established rights in the mark contained in its entirety within the disputed domain name.

 

Respondent has no rights to or legitimate interests in the mark and domain name.

 

Respondent registered a domain name that is confusingly similar to Complainant’s protected mark.

 

Respondent registered and used the domain name in bad faith.

 

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."

 

Paragraph 4(a) of the Policy requires Complainant to 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.

 

Given 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 will draw such inferences as the Panel 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.”).

 

Identical or Confusingly Similar

 

Complainant claims rights in the HOT HEADS HAIR EXTENSIONS trademark pursuant to its registration with the USPTO (Reg. No. 3,363,198 registered June 9, 2009), for the sale of wigs and hair extensions. See Complainant Annex A. The Panel notes that previous panels have found that a complainant’s registration of a mark with the USPTO is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). The Panel therefore finds that Complainant established rights in the HOT HEADS HAIR EXTENSIONS mark for the purposes of Policy ¶ 4(a)(i).

 

Complainant claims that the <hotheadshairextensions.com> mark is identical or confusingly similar to Complainant’s HOT HEADS HAIR EXTENSIONS MARK. The Panel notes that addition of a gTLD and elimination of spaces is insufficient to distinguish a domain name from a mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel notes that the disputed domain name duplicates Complainant’s mark in its entirety. Accordingly, the Panel finds that the <hotheadshairextensions.com> domain name is identical to or confusingly similar to Complainant’s HOT HEADS HAIR EXTENSIONS mark under Policy ¶ 4(a)(i).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(i).

 

The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

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 of proof shifts to Respondent to show it does have such 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”

 

Complainant argues that Respondent has not been commonly known by the <hotheadshairextensions.com> domain name and has thus not established rights or legitimate interests under Policy ¶ 4(c)(ii). Complainant notes that the WHOIS information for the disputed domain name lists “Justin Kline” as the registrant, and that Respondent is not a licensee of Complainant. WHOIS information that shows no nominal relationship to the mark and a lack of authorization by a complainant are strong evidence that a respondent is not commonly known by a domain name. This Panel therefore finds that Respondent has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).

 

Complainant also contends that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant notes that the disputed domain name resolves to a website that purports to be informational, but includes pay-per-click links to websites offering products that compete with Complainant. Complainant further notes that Respondent has offered to sell the disputed domain name to Complainant. The Panel notes that both of these factors indicate a lack of a bona fide offering or a legitimate noncommercial or fair use. 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). Accordingly, the Panel here finds that Respondent has not established rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(ii).

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶  4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant presents evidence that Respondent offered to sell the disputed domain name, and argues that this is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Complainant Annex F. The Panel notes that such an offer of sale is evidence of bad faith under Policy ¶ 4(b)(i). See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith). Therefore, the Panel finds that Respondent registered the <hotheadshairextensions.com> domain name primarily for the purpose of making such an offer, and holds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i).

 

Complainant also argues that Respondent is using the disputed domain name to disrupt Complainant’s business for its own benefit, as is clear by the offer to sell and links to competing businesses. The Panel notes that use of competing hyperlinks has been found to be evidence of bad faith disruption under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Accordingly, the Panel here finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).

 

Complainant further contends that Respondent is using the disputed domain name to intentionally attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark, in order to commercially benefit through pay-per-click links. The Panel finds that use of links to competing businesses is evidence of bad faith diversion for commercial gain under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”)

 

Respondent makes no contentions relative to Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶  4(a)(iii).  

Current Providers:

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <hotheadshairextensions.com> domain name be TRANSFERRED from Respondent to Complainant.  

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: April 17, 2013.   

 

 

 

 

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