Modern Beauty Supplies Inc.
v. MDNH, Inc. c/o Jay Bean
Claim Number: FA0705000975334
PARTIES
Complainant is Modern Beauty Supplies Inc. (“Complainant”), represented by Monica
Sharma, of Blake Cassels & Graydon LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <modernbeauty.com>, registered with Moniker
Online Services, Inc.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
David Bernstein and M. Kelly Tillery as Panelists, Richard Hill as
Presiding Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 30, 2007; the
National Arbitration Forum received a hard copy of the Complaint on May 7, 2007.
On May 3, 2007, Moniker Online Services, Inc. confirmed by
e-mail to the National Arbitration Forum that the <modernbeauty.com>
domain name is registered with Moniker Online
Services, Inc. and that Respondent is the current registrant of the
name. Moniker
Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On May 11, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 31, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@modernbeauty.com by e-mail.
A timely Response was received and determined to be complete on May 31, 2007.
On June 12, 2007, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed David Bernstein and M. Kelly Tillery as Panelists,
and Richard Hill as Presiding Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant alleges that it registered the Canadian trademark “MBS
Modern Beauty Supplies Inc.” plus design in September 2004. It further alleges that “Modern Beauty” has
been part of the Complainant’s corporate name in
According to the Complainant, the Respondent has no rights or
legitimate interests in the contested domain name as the Respondent only uses
the domain name to provide links to third-party sites, the majority of which do
not relate to beauty or beauty products.
Further, says the Complainant, it approached the Respondent in order to
purchase the contested domain name. The
Respondent did not respond, but the Complainant was advised that it would cost
US $25,000 to purchase the domain name.
Given that minimal business (if any) is being conducted on the website
at the disputed domain name, the Respondent is displaying bad faith by asking
for such a high price.
B. Respondent
According to the Respondent, the Complainant has presented no evidence
to show that it has any trademark rights, apart from the rights in the
registered mark “MBS Modern Beauty Supplies Inc.” plus design. The mark in question is words plus design,
including a logo “MBS” and a highly stylized drawing of a woman’s head. The commercial impression of the text to the
right of the logo and woman is that of “modern” beauty supplies, and not
“modern beauty” supplies. Indeed
the term “beauty supplies” as a unit is disclaimed. The mark claimed by Complainant consists of a
particularly complex geometric design, background/foreground scheme, a stylized
woman’s head, particular typeface, and additional text in which “MODERN”
appears apart from “Beauty Supplies Inc.” The Respondent cites several UDRP Panels that have
held that block lettered domain names, even where the letters are identical to
those in stylized marks are not “confusingly similar” thereto.
Further, says the Respondent, the term “MODERN BEAUTY” is not
distinctive of the Complainant, and is widely used, even in
Accordingly, the Respondent submits that, apart from the graphical
stylized indication claimed by the Complainant, the evidence shows that “Modern
Beauty” per se is an ordinary term used in the beauty and fashion field
by many business entities, and is not exclusively or distinctively associated
with the Complainant. Neither the Complainant’s registration of a stylized and
graphical representation, nor its trade name of “Modern Beauty Supplies Inc.,”
provides evidence that the domain name is identical or confusingly similar to
the narrow distinctiveness the Complainant may claim in connection with its registered
trademarks.
With respect to rights or legitimate interests, the Respondent alleges
that Registration of the domain name pre-dates the effective date the
Complainant may claim in its Canadian trademark registrations issued 2004. The
Respondent is as entitled as any of the hundreds of other businesses that it
presents in Exhibits attached to the Response to use the term “Modern Beauty”
for any purpose that Respondent sees fit.
The Respondent’s website includes paid search links relating to the
concept of beauty. As is well-known, the Respondent owns a large portfolio of
domain names, and uses those domain names as search terms to provide
automatically generated content of which the domain name is descriptive. It is
a well-settled proposition under the Policy that the use of a descriptive term
as a domain name in connection with a commercial locator service is a bona fide use of the domain name. Indeed,
such use may be considered to be a more equitable use of descriptive terms,
permitting a variety of advertisers to obtain traffic on the basis of such
terms, than the monopolization of common descriptive terms and phrases by a
single advertiser.
The Respondent cites prior cases involving it in which Panels have held
that Respondent’s pay-per-click advertising sites constitute bona fide use within the meaning of Policy
¶ 4(c)(i).
With respect to the bad faith element, the Respondent alleges that the
Complainant is apparently aware that the rights conferred in its trademark
registrations post-date the Respondent’s registration of the domain name. It is
a fundamental principle under the Policy that rights claimed by the Complainant
must pre-date registration of the domain name under dispute.
Thus, says the Respondent, it is clear that it did not register the
disputed domain name “primarily for the purpose of selling” it to the
Complainant. Further, and contrary to the Complainant’s assertion, there was
never any direct communication between the parties with respect to a possible
sale of the disputed domain name.
The Complainant only communicated with the Registrar, and the Registrar
never forwarded any communications to the Respondent. The Respondent is a wholly owned subsidiary
of Marchex Inc. Marchex Inc. is a
publicly listed corporation on the NASDAQ exchange (symbol: MCHX) with a market
capitalization of US $650 Million
(http://finance.yahoo.com/q/bc?s=MCHX&t=1d). Quite bluntly, no one in a
position of authority at the Respondent’s organization ever saw the
Complainant’s correspondence, nor would anyone be interested in the
Complainant’s offer of $400.
According to the Respondent, it is utterly clear that at no time was
the Complainant told by the Respondent that Complainant could buy the domain
name for $25,000. It is absolutely clear that the Registrar purports to
appraise the value of domain names. It most likely appears that during the
telephone conversation between Complainant and the Registrar that the Registrar’s
representative probably discussed what he or she believed the domain name to be
worth, and what might constitute a realistic offer that the Registrar would
then consider conveying to the Respondent. Given the scale of the Respondent’s
operation, the staff and management of the Registrar know better than to bother
the Respondent over a $400 offer. Respondent does not doubt that the Registrar
gave its honest and independent appraisal of what might constitute a realistic
offer, however, Respondent never received such an offer. In any case, says the
Respondent, it will not sell the domain name for $25,000.
Further, it is not the Respondent’s business to sell domain names, but
to exploit the value of common terms as domain names in precisely the same
manner that such competitors as Yahoo! and Google exploit the value of common
terms by selling them as paid keyword search terms to advertisers.
Finally, according to the Respondent, the Complainant has engaged in
Reverse Domain Name Hijacking, because it knows that the disputed domain name
is a common term and that its trademark rights in the complex stylized mark
post-date the Respondent’s registration of the disputed domain name. Thus the Complaint is frivolous.
FINDINGS
The Respondent registered the contested
domain name in December 2001.
The Complainant filed its application to
register its trademark in June 2003, based on a claim of first use in May 2001,
and received its registration in September 2004.
The Complainant’s trademark consists of a
combination of logo, drawing, and the words MODERN BEAUTY SUPPLIES.
The Respondent is using the contested domain
name for a landing page website containing commercial links to a number of
other sites, including, but not limited to, sites related to beauty products.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The majority of the Panel accepts the
Respondent’s argument to the effect that it is not clear that the disputed
domain name is confusingly similar to the Complainant’s mark, because that mark
is a complex combination of drawings and words.
In Quest Air Technology v. Lee, AF-1006 (eRES, October 30,
2001), the Panel stated:
The Complainant’s trademark consists of a
stylized rendition of the word quest and air. The words themselves only
constitute part of the mark and not the mark itself. The trademark is for the
combination of the design and the words, not just the words themselves. It is not obvious to this Panel that the mere
letters “questair” are confusingly similar to a trademark that consists of a
stylized rendering of those letters, where the design of the letters
constitutes an integral part of the trademark. The Complainant does not present any
evidence that would prove such a confusing similarity.
In the present case, the Complainant has
also failed to present any evidence to indicate that there was any actual
confusion (for example, complaints from customers). But, in accordance with ¶ 4(a) of the Policy, the
Complainant has the burden of proving that the contested domain name is
confusingly similar to its mark.
Thus the majority finds that the Complainant
has not met its burden of proving that the disputed domain name is confusingly
similar to its mark. See Advanced Educ. Sys., LLC v. Bean c/o MDNH,
Inc., (Nat. Arb. Forum May 23,
2007) (“Although Complainant possesses federal registrations for the marks …
the rights conferred by these [sic] USPTO are limited to the distinctive
graphical manner in which the marks are actually depicted and do not confer
exclusive rights to the ‘traingingpro’ in other forms and styles and most
certainly do not confer exclusive rights in the common, descriptive phrase
‘training pro.’”); see also Tesla Indus., Inc. v.
Grossman, FA 547889 (Nat. Arb. Forum Dec. 5, 2005) (“Several Panels have held
that block lettered domain names, even where the letters are identical to those
in stylized marks are not “confusingly similar.”).
The minority of the Panel has a different
view. The minority notes that Complainant’s
registration is for the mark “Modern Beauty Supplies, Inc.” and design, with
the words “Beauty Supplies” disclaimed.
Significantly, the Canadian Trademark Office did not also require
disclaimer of the word “Modern.” Cf. Rodale,
Inc. v. Cambridge, DBIZ2002-00153 (WIPO June 28, 2002) (refusing to find
trademark rights where the words “scuba diving” were disclaimed in
complainant’s registration for RODALE’S SCUBA DIVING and the domain name
consisted solely of those words plus the gTLD, namely <scubadiving.biz>). Although Respondent vigorously contests
Complainant’s exclusive right to use the words MODERN BEAUTY as a trademark,
the fact that the Canadian Trademark Office registered the mark without
requiring disclaimer of the word MODERN suggests that the Office believed the
word MODERN was not descriptive or generic for the services at issue, but
rather does have some trademark significance.
Accordingly, the minority defers to the Canadian Trademark Office and
finds that Complainant does have trademark rights in the term MODERN BEAUTY
SUPPLIES, INC., subject to the disclaimer of “Beauty Supplies” and the obvious
lack of trademark distinctiveness in the term “Inc.” See
Electronic Commerce Media, Inc. v.
The minority also finds that the domain name
is confusingly similar to that mark for purposes of the Policy. In assessing similarity, because design elements
cannot be reflected in domain names, they typically are disregarded. See
General Machine Products Company, Inc. v.
Prime Domains, FA
92531 (Nat.
Arb. Forum Mar. 16, 2000). Given that the most distinctive portion of
the words in the mark, MODERN, is reproduced in its entirety in the domain
name, along with the common use of the generic word BEAUTY (when that word is
used in connection with the sale of beauty-related goods and services), the minority
concludes that there is sufficient similarity between the domain name and the trademark
to satisfy the first factor under the Policy.
See Wal-Mart Stores, Inc. v.
MacLeod, D2000-0662 (WIPO Sept.
19, 2000).
In any case, the point is moot for the
reasons set forth below.
The Respondent freely admits that it is using
the disputed domain name for a landing page to generate click-through
advertising revenue. In the present
case, such a use is a legitimate interest for the purposes of the Policy because
the links and advertisements posted on the web page are directly related to the
generic meaning of the domain name. See The Knot, Inc. v. In
Knot We Trust LTD, D2006-0340
(WIPO June 16, 2006) (landing page was not legitimate where the domain name, <knot.com>,
was being used for links related to wedding planning; that use was not directly
linked to the generic meaning of the word “knot” but rather appeared designed
to take advantage of the trademark meaning of the mark THE KNOT, which is used
as a mark for a well-known wedding planning website).
In Advanced Drivers Education Products & Training, Inc. v. MDNH, Inc.,
FA 567039 (Nat. Arb.
Forum Nov. 10, 2005), the panel found that the disputed domain name was not
used in the trademark sense, but was “a descriptor of the site’s intended content
or theme.” Therefore, the panel found
that the complainant had failed to prove that Respondent lacked any rights or
legitimate interests in the disputed domain name. Similarly, in Multicast Media Networks, LLC v. MDNH, Inc.,
FA 434268 (Nat. Arb. Forum Apr. 28, 2005), the Respondent operated a
pay-per-click search engine from which the Respondent derived revenue to post
advertisements to various goods and services.
The panel in that case found that “[t]his was a bona fide use within the meaning of ¶ 4(c)(i), particularly in
light of the extended period of such use.”
In the present case, the website
pointed to by the disputed domain name contains links that are directly relevant
to the descriptive meaning of the domain name, namely “modern beauty.”
Therefore, the Panel agrees with the Respondent’s arguments and the cited cases
and holds that the Respondent does have a legitimate interest, for purposes of
the Policy, in the disputed domain name.
The Complainant makes much of the fact that
it was told that the disputed domain name is worth $25,000. But the query regarding the sale of the
disputed domain name was initiated by the Complainant, not by the
Respondent. That is, the Respondent did
not seek to sell the disputed domain name, it was the
Complainant who sought to buy it.
And, as the Respondent correctly points out,
the information was provided by the Registrar, a third party, not by the
Respondent. The Complainant presents no
evidence to show that the Respondent registered the disputed domain name primarily
in order to sell it to the Complainant.
Finally, the Respondent certifies that, prior
to this proceeding, it never heard of the Complainant and thus was not aware of
the Complainant’s trademark rights at the time it registered the domain
name. Given that the Complainant had
only recently begun use of its trademark at the time the domain name was
registered, that there is no evidence that the Complainant’s trademark was
particularly famous or well-known at that time, and that the Complainant has
not submitted any other evidence that might undermine the Respondent’s
assertion (such as proof that the Complainant sent information about its
products or services to the Respondent prior to the registration of the domain
name), the Respondent’s certification (even though it is only signed by
counsel) is credible. The Panel thus
finds, on the basis of the record and for the purposes of this proceeding, that
the Respondent was not aware of the Complainant’s trademark at the time it
registered the domain name, and as such, it could not have registered the
domain name with a bad faith intent to take advantage
of Complainant’s trademark rights. See Dreamgirls, Inc. v. Dreamgirls Entm’t,
D2006-0609 (WIPO Aug. 10, 2006).
The Respondent requests the Panel to find that the Complainant has engaged in Reverse Domain Name Hijacking. That term is defined in Paragraph 1 of the Rules as:
Reverse Domain Name
Hijacking means using
the Policy in bad faith to attempt to deprive a registered domain-name holder
of a domain name.
The general conditions for a finding of bad faith on the part of the Complainant are well stated in Smart Design LLC v. Hughes, <smartdesign.com> D2000-0993 (WIPO October 18, 2000):
Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.
These conditions are confirmed in Goldline International, Inc. v. Gold Line, <goldline.com> D2000-1151 (WIPO Jan. 4, 2001) and Sydney Opera House Trust v. Trilynx Pty. Limited, <sydneyoperahouse.net> D2000-1224 (WIPO Oct. 31, 2000) (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express, <planexpress.com> D2000-0565 (WIPO July 17, 2000).
Although the Panel has ruled for Respondent, there is nothing in the record to indicate either malice aforethought or harassment by the Complainant. Accordingly, the Panel denies the Respondent’s request for a finding of Reverse Domain Name Hijacking.
DECISION
Having considered all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
The Panel denies the Respondent’s request that Reverse Domain Name
Hijacking be found.
Richard Hill, Presiding Panelist
David Bernstein,
Panelist M.
Kelly Tillery, Panelist
Dated: June 25, 2007
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