DC Labs, Inc. v. Inkube, LLC
Claim Number: FA1306001504549
Complainant is DC Labs, Inc. (“Complainant”), represented by Katherine Bond of Sheldon Mak & Anderson, California, USA. Respondent is Inkube, LLC (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ovationhairreviews.com> registered with GoDaddy.com, LLC.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2013; the National Arbitration Forum received payment on June 12, 2013.
On June 13, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ovationhairreviews.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@ovationhairreviews.com. Also on June 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 July 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown 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
Complainant makes the following allegations:
i. Complainant owns the OVATION HAIR mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,142,800 filed November 10, 2011, registered on May 15, 2012).
ii. Complainant owns several other well-known U.S. and international trademarks, such as OVATION CELL THERARY and OVATION, which comprise Complainant’s OVATION marks.
iii. Complainant is a corporation that is engaged in the production, sale, and distribution of hair care products and has been in business since 2007.
iv. Complainant uses OVATION HAIR mark in connection with hair care products, namely shampoos, conditioners, and styling products from the time adopted in 2007 until the present. Complainant has taken substantial efforts to promote the mark, such that the public has come to associate the OVATION Marks with hair care products of the highest quality. Complainant has advertised extensively over the past six years as advertising expenditures have totaled well over 20 million dollars over that time.
i. Policy ¶ 4(a)(i)
1. The <ovationhairreviews.com> disputed domain name contains a phrase identical to a trademark in which the Complainant has rights.
ii. Policy ¶ 4(a)(ii)
1. The Respondent has no rights or legitimate interests in the disputed domain name. Complainant has no affiliation with Respondent or the domain name in dispute.
2. The resolving site, at first glance, purports to provide Ovation Hair Reviews; however, it does not. Instead, the site relies on two reviews to disguise the fact that the web site is monetized by paid for advertisements or pay per click advertisements. The resolving page displays advertisements or links for other hair care companies and products.
iii. Policy ¶ 4(a)(iii)
1. Respondent’s bad faith is evidenced by Respondent’s cybersquatting behavior. Respondent currently holds several domain names seemingly affiliated with other famous companies, brands, or products.
2. Respondent has intentionally attempted to attract, for commercial gain, Internet users to the resolving site, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the site or the products displayed on the site.
3. Respondent had actual knowledge of Complainant’s rights in the OVATION HAIR and related marks, revealing Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States corporation that is engaged in the production, sale, and distribution of hair care products and has been in business in that field since 2007.
2. Complainant owns the OVATION HAIR mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,142,800 filed November 10, 2011, registered on May 15, 2012).
3. Complainant has established common law trademark rights in OVATION HAIR and those rights have existed since 2007.
4. Respondent registered the disputed domain name at issue on September 25, 2011.It resolves to a web site that contains two reviews of Complainant’s products but the site is monetized by paid or pay per click advertisements. The resolving page displays advertisements or links for other hair care companies and products.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims to own the OVATION HAIR mark through its trademark registrations with the USPTO (Reg. No. 4,142,800 filed November 10, 2011 registered on May 15, 2012). Complainant further claims to own several other well-known U.S. and International trademarks, such as OVATION CELL THERARY and OVATION (“the OVATION marks”). Previous panels have found that a complainant does not need to own a valid trademark registration in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i) if it can establish its rights in the mark through common law rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant claims it has been using the OVATION marks since 2007 in connection with the sale and offer for sale of hair care products. Complainant further claims to have exerted significant effort and resources to advertise and promote its goods and Complainant’s advertising expenditures have totaled well over 20 million dollars over the past six years. Complainant contends the public has come to associate the OVATION marks with hair care products of the highest quality. Complainant has adduced evidence to establish those contentions and the Panel accepts that evidence and the conclusions drawn from it Previous panels have found that complainants can establish a common law trademark through evidence such as the manner and amount of promotion of goods available under the mark, the extent of complainant’s use of the mark, and a degree of consumer recognition, all of which contribute to the establishment of a secondary meaning in a mark. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The Panel finds that on this basis Complainant has established common law rights in the OVATION marks including the OVATION HAIR mark for the purposes of Policy ¶ 4(a)(i), as Complainant has promoted its goods under the marks for six years and advertising expenditures have totaled well over 20 million dollars over that time.
The next question that arises is whether the disputed domain name is identical or confusingly similar to any of the OVATION marks. Complainant argues the <ovationhairreviews.com> domain name contains a phrase identical to one of Complainant’s common law marks in which the Complainant has rights, namely, OVATION HAIR. The Panel notes that the disputed domain differs from the OVATION HAIR mark only by the omission of the space between the two-word mark, adds the generic or descriptive word “reviews,” and adds the top-level domain name “.com.” The Panel finds that the addition of generic or descriptive words and a top-level domain, and the deletion of the space between the OVATION HAIR mark, do not sufficiently differentiate the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). In particular, the Panel finds that the <ovationhairreviews.com> domain name can mean only that it is a domain name of Complainant that will lead to a website dealing with reviews of Complainant’s products sold under the OVATION HAIR mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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).”). The domain name is therefore confusingly simialr to Complainant’s OVATION HAIR mark
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s OVATION HAIR trademark and to use it in its domain name , adding only the generic word “reviews” , thus enhancing the confusing similarity between the domain name and the trademark;
(b) Respondent has then used the disputed domain name to resolve to a website that gives the impression that it deals with reviews but in fact the site is monetized by paid or pay per click advertisements. The resolving page displays advertisements or links for other hair care companies and products.
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends it has no affiliation with Respondent or the domain name in dispute. Because Complainant claims that Respondent was not authorized to register a domain name containing Complainant’s registered mark, and there is no evidence that suggests Respondent is commonly known by the disputed domain name, the Panel finds Respondent is not commonly known by the domain name at issue under Policy ¶ 4(a)(i). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
(e)Further, Complainant argues Respondent’s use of the disputed domain name constitutes an infringement of Complainant’s rights in the mark. Complainant contends the resolving site, at first glance, purports to provide Ovation Hair Reviews; however, it does not, and instead contains two reviews to disguise the fact that the web site is monetized by advertisements or pay per click hyperlinks. Complainant asserts the advertisements or links lead consumers to other hair care companies and products. The Panel finds that Respondent’s use of the domain to provide advertisements and links to site competing for Complainant’s business does not constitute 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 Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent’s bad faith is evidence by Respondent’s “cybersquatting” behavior. Complainant asserts that Respondent currently holds several domain names seemingly affiliated with other famous companies, brands, or products. Complainant points to Respondent’s registration of the <IKEACRIBS.com> domain name to substantiate Complainant’s argument of Respondent’s bad faith. Previous panels have generally not found bad faith pursuant to Policy ¶ 4(a)(ii) where a respondent holds domain names that appear to be examples of cybersquatting, but are not in dispute in the current matter. However, in all the circumstances of the present case, the Panel finds it can make a finding that it is so unlikely that Respondent could legitimately use the IKEA mark in combination with the word “cribs” that the inference may be drawn that it amounts to bad faith under Policy ¶ 4(a)(ii).
Secondly, Complainant argues Respondent has intentionally attempted to attract, for commercial gain, Internet users to the resolving site, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the site or the products displayed on the site. Complainant contends Respondent’s efforts constitute bad faith. The Panel finds that Respondent’s use of a confusingly similar domain name in order to gain commercially from Complainant’s fame and notoriety is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Thirdly, Complainant argues Respondent had actual knowledge of Complainant’s rights in the OVATION HAIR and related marks, revealing Respondent’s bad faith. The Panel notes that although the date of the domain name’s registration predates Complainant’s federal trademark registration, Complainant alleges that its use of the OVATION HAIR mark since 2007 has caused the mark to achieve a high degree of distinctiveness sufficient to charge Respondent with knowledge of Complainant’s rights in the mark. As the Panel determines Respondent had actual knowledge of Complainant’s rights in the mark based on the name and contents of the disputed domain name, the Panel finds evidence of bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the OVATION HAIR mark, adding to it the word “review” and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ovationhairreviews.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown
Panelist
Dated: July 13, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page