DC Labs Inc. v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org
Claim Number: FA1404001552220
Complainant is DC Labs Inc. (“Complainant”), represented by Katherine Bond of Sheldon Mak & Anderson, California, USA. Respondent is Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ovationhairproducts.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she has acted independently and impartially and that 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 2, 2014; the National Arbitration Forum received payment April 2, 2014.
On April 15, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <ovationhairproducts.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 April 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 2014, 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@ovationhairproducts.com. Also on April 15, 2014, 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 May 5, 2014, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
1. Policy ¶ 4(a)(i)
i. Complainant, DC Labs Inc., is a corporation that is engaged in, among other things, the production, sale, and distribution of hair care products.
ii. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the OVATION HAIR mark (Reg. No. 4,142,800, registered May 15, 2012).
iii. Complainant commenced using the OVATION mark in commerce in the United States at least as early as September 2007 in connection with the sale and offer for sale of hair care products.
iv. Respondent’s <ovationhairproducts.com> domain name is confusingly similar to Complainant’s OVATION HAIR mark.
2. Policy ¶ 4(a)(ii)
i. Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name.
ii. Respondent is not commonly known by the disputed domain name.
iii. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
3. Policy ¶ 4(a)(iii)
i. The domain name should be considered as having been registered and being used in bad faith.
ii. Respondent intended to sell the disputed domain name to Complainant.
iii. Respondent had full knowledge of Complainant’s rights in the OVATION marks.
B. Respondent did not submit a response to this case. The Panel notes that Respondent registered the <ovationhairproducts.com> domain name February 8, 2011.
Complainant established that it has rights to and legitimate interests in the mark contained within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no such rights or legitimate interests in the mark or domain name.
Respondent registered and used the disputed domain name in bad faith.
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 to or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to 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 to or Confusingly Similar
Complainant asserts that it is a corporation that is engaged in, among other things, the production, sale, and distribution of hair care products. Complainant asserts that it is the owner of a trademark registration with the USPTO for the OVATION HAIR mark (Reg. No. 4,142,800, filed November 10, 2011, registered May 15, 2012). See Complainant’s Exhibit B. The Panel finds that although Respondent is a resident of Australia, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country of Respondent’s residence, so long as Complainant can establish 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 USPTO registration of the OVATION HAIR mark sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). However, the Panel notes that Respondent registered its <ovationhairproducts.com> domain name February 8, 2011, some 9 months before Complainant’s registration of the OVATION HAIR mark was filed with the USPTO. However, Complainant contends that it commenced using the OVATION marks in commerce in the United States at least as early as September 2007 in connection with the sale and offer for sale of hair care products. Complainant asserts that all of the OVATION marks have been used in connection with such goods continuously since 2007. The Panel notes that Complainant lists its first use of the OVATION HAIR mark in January 2007, and its first use in commerce in May 2007. See Complainant’s Exhibit B. In Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000), the panel found common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established. Thus, the Panel finds that Complainant made a continuous and ongoing use of the OVATION HAIR mark, such as would permit the Panel to find that Complainant has common law rights in the mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Complainant established secondary meaning in the OVATION HAIR mark and therefore, the Panel finds that Complainant acquired common law rights in the mark, pursuant to Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant urges that Respondent’s <ovationhairproducts.com> domain name is confusingly similar to Complainant’s OVATION HAIR mark. The Panel notes that Respondent includes Complainant’s entire OVATION HAIR mark in its entirety and merely adds the generic term “products” to it in the disputed domain name. The Panel finds that Respondent’s addition of a generic term does nothing to distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark). Lastly, the Panel observes that Respondent omits the space in Complainant’s OVATION HAIR mark in the disputed domain name and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s elimination of spaces and inclusion of a gTLD does not distinguish the name pursuant to a Policy ¶ 4(a)(i) analysis and that the domain name may still be confusingly similar to Complainant’s mark. 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).”). Therefore, the Panel finds that Respondent’s <ovationhairproducts.com> domain name is confusingly similar to Complainant’s OVATION HAIR mark according to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to ICANN 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 is not commonly known by the <ovationhairproducts.com> domain name. The Panel notes that the WHOIS record identifies “Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org” as the registrant of the disputed domain name and that Respondent has not provided any evidence showing that it is known by the disputed domain name. Accordingly, the Panel finds that, based on the relevant evidence in the record, Respondent is not commonly known by the <ovationhairproducts.com> domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims that Respondent is not using the <ovationhairproducts.com> domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Panel observes that Respondent has listed the disputed domain name for sale for $1,190. USD on GoDaddy. See Complainant’s Exhibit F. Further, the Panel notes that Respondent is using the disputed domain name to send emails to Complainant and other Internet users stating: “I am writing to you today to notify you that <ovationhairproducts.com> will be available by auction soon.” See Complainant’s Exhibit D. Past UDRP panels have held that a respondent’s offer to sell a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). As a result, this Panel finds that Respondent is not using the <ovationhairproducts.com> domain name in connection with a bona fide offering of goods pursuant to Policy ¶ 4(c)(i), or services nor a legitimate noncommercial or fair use pursuant to Policy ¶ 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 argues that Respondent intended to sell the <ovationhairproducts.com> domain name to Complainant. The Panel notes that Respondent listed the disputed domain name for sale for $1,190. USD on GoDaddy.com. See Complainant’s Exhibit F. The Panel also notes that Respondent is using the disputed domain name to send emails to Complainant and other Internet users stating: “I am writing to you today to notify you that <ovationhairproducts.com> will be available by auction soon.” See Complainant’s Exhibit D. Complainant asserts that no one other than Complainant would be even remotely interested in purchasing the disputed domain name for $1,190. Thus Respondent’s targeted e-mails evidence Respondent’s intent to sell the domain name to Complainant. The Panel finds that Respondent registered the disputed domain name primarily for the purpose of offering to sell the disputed domain name to Complainant, and the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Complainant contends that Respondent had full knowledge of Complainant’s rights in the OVATION marks at the time that it registered the <ovationhairproducts.com> domain name. The Panel agrees. Respondent’s use establishes Respondent’s knowledge of Complainant’s OVATION marks. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore finds that Respondent registered the disputed domain name in bad faith under a Policy ¶ 4(a)(iii) evaluation. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding 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").
Respondent makes no contentions relative to ICANN 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’s Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be GRANTED.
Accordingly, it is Ordered that the <ovationhairproducts.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 13, 2014
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