Cutex Brands, LLC v. Domain Names Administration, St Kitts Registry
Claim Number: FA1405001557254
Complainant is Cutex Brands, LLC (“Complainant”), Missouri, USA. Respondent is Domain Names Administration, St Kitts Registry (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cutex.com>, registered with MONIKER ONLINE SERVICES 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2014; the National Arbitration Forum received payment on May 8, 2014.
On May 8, 2014, MONIKER ONLINE SERVICES LLC confirmed by email to the National Arbitration Forum that the <cutex.com> domain name is registered with MONIKER ONLINE SERVICES LLC and that Respondent is the current registrant of the name. MONIKER ONLINE SERVICES LLC has verified that Respondent is bound by the MONIKER ONLINE SERVICES 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 May 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cutex.com. Also on May 13, 2014, 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 June 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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 owns the registered trademark CUTEX, which has been used in connection with nail polish removers and other nail care products for over 100 years. Complainant asserts that its mark is not a word found in any dictionary, for any language. Complainant contends that the disputed domain name <cutex.com> is identical or confusingly similar to its CUTEX mark. Complainant contends further that Respondent has no rights or legitimate interests in the disputed domain name, on the grounds that Respondent has no association with Complainant or its mark, does not offer any product or service, and is causing confusion to consumers seeking information about Complainant’s products. Finally, Complainant alleges that Respondent has posted a link offering to sell the disputed domain name, but rejected Complainant’s purchase offer as insufficient, and that Respondent’s registration of the domain name is preventing Complainant from being able to use the name for its own purposes. On these grounds Complainant contends that the domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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 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 disputed domain name is identical to Complainant’s registered trademark, but for the addition of the “.com” top-level domain, which is irrelevant for purposes of paragraph 4(a)(1) of the Policy. See, e.g., Abt Electronics, Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (finding <abt.com> identical to ABT). The Panel finds that the disputed domain name is identical to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name is identical to Complainant’s distinctive mark, and apparently it was registered without authorization and solely for purposes of resale. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that the domain name was acquired “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name.” Under paragraph 4(b)(ii), bad faith may be shown by evidence that the domain name was registered “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct.”
Complainant has presented evidence indicating that the disputed domain name was acquired primarily for the purpose of selling it for a profit. In light of the distinctive nature of the mark, the Panel infers that Respondent’s intentions were targeted at Complainant or a competitor thereof, and finds bad faith registration and use pursuant to paragraph 4(b)(i) of the Policy. Complainant has not presented evidence of a pattern of cybersquatting, as would be required for a finding under paragraph 4(b)(ii), although the Panel notes that such evidence relating to Respondent may readily be found by a cursory search of previous decisions under the Policy. The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cutex.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 11, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page