Evergreen Research & Marketing, LLC v. Tumina Walls / iZiggy Promotions
Claim Number: FA1808001800378
Complainant is Evergreen Research & Marketing, LLC (“Complainant”), represented by Alex E. Jones of Kohrman Jackson & Krantz LLP, Ohio, USA. Respondent is Tumina Walls / iZiggy Promotions (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <miraclehairwholesale.com> and <themiraclehair.com>, registered with Network Solutions, 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.
Lars Karnøe as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 7, 2018; the Forum received payment on August 7, 2018.
On August 7, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <miraclehairwholesale.com> and <themiraclehair.com> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 August 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@miraclehairwholesale.com, postmaster@themiraclehair.com. Also on August 17, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 19, 2018, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Lars Karnøe 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant
The Complainant is the proprietor of the trademark “MIRACLE HAIR” (USPTO 4203553), registered in class 7 for:
“Cosmetic, all-natural fibers which are attached to hair for covering bald and thinning spots and enhancing hair volume”
which has been consistently used for the registered goods since 17 November 2011. Also, the Complainant has registered the domain name miraclehair.com from where it engages in the vast majority of the sale of the relevant goods.
Initially, the Complainant claims that the disputed domain names are confusingly similar (UDRP Rule 3(b)(ix)(1)) to the Complainant’s registered trademark mentioned above and, additionally, that the Complainant routinely receives complaints for customers who have purchased goods from on the Disputed domain names, mistakenly thinking they originated from the Complainant.
Secondly, the Complainant claims that the registrations of the disputed domain names were made without legitimate interest and/or lack of rights (UDRP Rule 3(b)(ix)(2)). This claim is supported by the fact that the Complainant’s trademark, mentioned above, was applied for in 2011 and matured into registration in 2012, whereas the Respondent’s registered the disputed domain names 13 August 2016 (themiraclehair.com) and 20 May 2017.
Finally, the Complainant claims that the registrations of the disputed domain names were made in Bad Faith (UDRP Rule 3(b)(ix)(3)) and used merely for commercial gain at the expense of the Complainant by intentionally creating likelihood of confusion to the Complainant’s trademark and goods.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark and domain name and that the Respondent has no legitimate interest in the disputed domain names which are registered and 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(f), 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 (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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Given the evidence presented, the Panel concludes that disputed domain names are in fact controlled by the same person and/or entity and can, consequently, be subject to this decision
In the Panel’s assessment of the possibility of confusing similarity between the Complainant’s trademark and the disputed domains, it has been taken into account that the disputed domain names contain the prefix “the” (themiraclehair.com) and the suffix “wholesale” (miraclehairwholesale.com).
However, both the prefix and suffix are non-distinctive and merely describe or elaborate on the essential part of the disputed domain names, in this case “miraclehair”.
The assessment of confusing similarity must therefore not – or to a very little degree – take the prefix and suffix into account and conduct the assessment, primarily, between the distinctive part of the disputed domain names and the Complainant’s trademark.
In doing so, the Panels finds that the disputed domain names are confusingly similar to Complainant’s trademark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights or legitimate interest in the disputed domain names, whereby the burden of proof shifts to the Respondent to provide evidence of such rights or legitimate interest.
Keeping the Panel’s decision on confusing similarity in mind, the disputed domain names consist solely of the Complainant’s trademark and previous Panels concluded that the such use for commercial gain, at the expense of the Complainant, is not considered a bona fide offering of goods and/or services.
In view of the Respondent’s failure to provide evidence of the contrary and with emphasis on the actual confusion between the goods offered by the Complainant and the registration and use of the disputed domain names, the Panel finds that the Complainant has made a prima facie case and that the Respondent has no rights or legitimate interest in the disputed domain names.
Finally, the Complainant must show that the disputed domain names were registered in bad faith. According to UDRP 4(b)(iv) the evidence hereof may show that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondents web site by creating a likelihood of confusion or association with the Complainant’s trademark or goods.
Under the circumstances presented here, it seems that the disputed domain names were registered with the intent to exploit the trademark, goodwill and commercial history of the Complainant.
Consequently, the Panel find that the registration and use of the disputed domain names are conducted in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <miraclehairwholesale.com> and <themiraclehair.com> domain names be TRANSFERRED from Respondent to Complainant
Lars Karnøe, Panelist
Dated: 3 October 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page