DECISION

 

Tibolli, LLC v. Michael Schiavinato

Claim Number: FA1807001796010

PARTIES

Complainant is Tibolli, LLC (“Complainant”), represented by Rizwan Anwar, Puerto Rico, USA.  Respondent is Michael Schiavinato (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <igkhair.com>, registered with Godaddy.Com, Llc.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 10, 2018; the Forum received payment on July 10, 2018.

 

On July 11, 2018, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <igkhair.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 July 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 2018 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@igkhair.com.  Also on July 12, 2018, 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.

 

A timely Response was received and determined to be complete on August 1, 2018.

 

On August 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

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

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant, Tibolli, LLC, is a well-known hair-care brand. Complainant uses the GK HAIR mark to provide and market and its goods and services. Complainant has rights in the mark based on its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,946,341, registered on Apr. 12, 2011). See Amend. Compl. Annex 1. Respondent’s <igkhair.com> is confusingly similar to Complainant’s GK HAIR mark as it incorporates the mark in its entirety, merely adding the letter “i” and the “.com” generic top-level domain (“gTLD”).

2.    Respondent does not have rights or legitimate interests in the <igkhair.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted respondent permission or license to use the GK HAIR mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the <igkhair.com> domain name to offer products and services identical to Complainant which directly compete with Complainant’s business.

3.    Respondent has registered and used the <igkhair.com> domain name in bad faith. Respondent is attempting to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location. In addition, Respondent engages in typosquatting. Finally, Respondent must have had actual and/or constructive knowledge of Complainant’s rights in the GK HAIR mark prior to registering the <igkhair.com> domain name.

 

B.   Respondent:

1.    Respondent is a premium hairstyling products company founded in 2014 by four renowned hair stylists. Respondent has rights in the IGK mark through its trademark registrations with the USPTO (e.g., Reg. No. 4,757,637, registered Jun. 16, 2015) and has established common law rights. Respondent’s <igkhair.com> domain name is not identical or confusingly similar to Complainant’s mark because Respondent’s domain name includes an additional letter “i” that is not present in Complainant’s stylized GK HAIR mark. In addition, the “IGK” and “GK” have different meanings.

2.    Respondent’s representative, Mr. Schiavinato, is responsible for registering and maintaining the domain names for IGK LLC and was acting within the scope of his duties on behalf of IGK LLC and its business. See Resp. Annex 10. Therefore, Respondent is commonly known by the disputed domain name because it has operated and conducted business through the website since 2014, uses the IGK Hair handle for all of its social media accounts and is referred to as IGK hair in various publications. In addition, Respondent has rights and legitimate interests in the disputed domain name as Respondent has invested considerable amounts of work and expenditure in its hair services and products under the disputed domain name. See Resp. Annexes 8, 9, 13, and 15. Further, Respondent has a legitimate interest in the disputed domain name as Respondent incorporates its own IGK mark and adds the generic term “hair” to create the <igkhair.com> domain name.

3.    Respondent properly registered the <igkhair.com> domain name and is not using the disputed domain name in bad faith. Complainant concedes, “IGK” represents the last names of each of the co-founders of Respondent, operating a bona fide premium hair style services and products business under the disputed domain name since 2014. In addition, the letter “i” is not near the letter “G” on a keyboard, nor is the letter “i” near the period key, which further weighs against any finding of typosquatting. Finally, constructive notice is not recognized under Policy ¶ 4(a)(iii).

 

FINDINGS

1.    Respondent’s <igkhair.com> domain name is not confusingly similar to Complainant’s GK HAIR mark.

2.    Consequently, the Panel declines to analyze the other two elements of the Policy.

 

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 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.

 

Identical and/or Confusingly Similar

Complainant claims rights in the GK HAIR mark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the GK HAIR mark (e.g., Reg. No. 3,946,341, registered on Apr. 12, 2011). See Amend. Compl. Annex 1. Therefore, the Panel finds that Complainant has rights in the GK HAIR mark per Policy ¶ 4(a)(i).

 

Respondent argues that the <igkhair.com> domain is neither identical or confusingly similar to Complainant’s GK Hair mark. A difference of even a single letter between a Respondent’s domain name and Complainant’s mark is sufficient to render them non-identical under the Policy. See eCrush.com, Inc. v. Davis Cox, WIPO Case No. D2004-0552 (finding that “The Disputed Domain Name is not identical, legally or otherwise, to the Complainant’s mark” because a single letter was different). Here, as Complainant acknowledges, the <igkhair.com> domain name includes an additional letter “I” that is not present in Complainant’s stylized GK HAIR mark. Changes to a complainant’s mark, such as adding a letter, may be sufficient to differentiate a disputed domain name from a mark if a respondent claims the change coincides with its own mark. See eCrush.com, Inc. v. Cox, Davis & Simpsom, LLC, Mr. Ken Cox, Mr. Brian Simpson, Mr. Ron Davis  (WIPO Sep. 11, 2004) (rejecting complaint where the only difference between the disputed domain name and the trademark was the letter “I” at the beginning of the disputed domain name). Respondent claims Complainant itself concedes that “IGK” and “GK” have different meanings and cites to the complaint. See Compl. at 7-8. Respondent claims the “IGK” mark refers to the first letter of the last names of its four founding stylists. See Resp. Annex 2. On the other hand, Respondent contends the “GK” in Complainant’s purported mark appears to stand for “Global Keratin.” The Panel finds that the stylized GK HAIR mark and the “IGK” in the disputed domain name have entirely different meanings and find that Respondent’s <igkhair.com> domain name is neither identical or confusingly similar to Complainant’s GK Hair mark.

 

As the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because the disputed domain name is not identical or confusingly similar to the mark, the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <igkhair.com> domain name REMAIN with Respondent.

 

John J. Upchurch, Panelist

Dated:  August 16, 2018