DECISION

 

Ulta Salon, Cosmetics & Fragrance, Inc. v. Michael T. Nishimura

Claim Number: FA1907001851722

 

PARTIES

Complainant is Ulta Salon, Cosmetics & Fragrance, Inc. (“Complainant”), represented by Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA.  Respondent is Michael T. Nishimura (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ulta.info>, registered with NameSilo, 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 12, 2019; the Forum received payment on July 15, 2019.

 

On July 12, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <ulta.info> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name.  NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 2019 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@ulta.info.  Also on July 18, 2019, 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 August 8, 2019, 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. 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant is the largest beauty retailer in the United States. Complainant has rights in the ULTA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,504,336, registered Nov. 6, 2001). See Compl. Ex. E. Respondent’s <ulta.info> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the ULTA mark and only adds the “.info” generic top-level domain (“gTLD”).

 

2.    Respondent lacks rights or legitimate interests in the <ulta.info> domain name. Respondent is not commonly known by the disputed domain name and Respondent has not been license or authorized to use the mark. Respondent fails to use the <ulta.info> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to display pornographic content.

 

3.    Respondent registered and uses the <ulta.info> domain name in bad faith. Respondent uses the confusingly similar domain name to deceive consumers as to the source, sponsorship, affiliation, or endorsement of the website, thereby disrupting Complainant’s business. Respondent’s use of the <ulta.info> domain name to display pornographic content is evidence of bad faith. Respondent had actual or constructive knowledge of Complainant’s rights in the ULTA mark prior to registration of the disputed domain name.

 

B.   Respondent:

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <ulta.info> domain name is confusingly similar to Complainant’s ULTA mark.

 

2.    Respondent does not have any rights or legitimate interests in the <ulta.info> domain name.

 

3.    Respondent registered or used the <ulta.info> domain name in bad faith.

 

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.

 

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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant asserts rights in the ULTA mark based on registration of the mark with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Complainant provides copies of its registrations with the USPTO (e.g. Reg. No. 2,504,336, registered Nov. 6, 2001). See Compl. Ex. E. Accordingly, the Panel finds that Complainant has established rights in the ULTA mark for the purposes of Policy ¶ 4(a)(i).

 

Complainant next argues that Respondent’s <ulta.info> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the ULTA mark and only adds the “.info” gTLD. The addition of a gTLD does not sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). The Panel therefore finds that the <ulta.info> domain name is confusingly similar to the ULTA mark under Policy ¶ 4(a)(i).

 

Rights 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues Respondent lacks rights or legitimate interest in the <ulta.info> domain name as Respondent is not commonly known by the disputed domain name and Respondent has not been license or authorized to use the mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Michael T. Nishimura,” and there is no other evidence to suggest that Respondent was authorized to use the ULTA mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Complainant contends Respondent fails to use the <ulta.info> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to display pornographic content. Using a disputed domain name to host adult-oriented material may not be considered a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). Complainant provides screenshots of the resolving webpage of the disputed domain name which displays pornographic content. See Compl. Ex. F. The Panel  therefore finds Respondent does not use the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

Complainant argues Respondent registered and uses the <ulta.info> domain name in bad faith as Respondent uses the confusingly similar domain name to deceive consumers as to the source, sponsorship, affiliation, or endorsement of the website, thereby disrupting Complainant’s business. Registration of a domain name consisting of a slight variation of a complainant’s mark and affiliation with the disputed domain name and the complainant can constitute bad faith registration and use per Policy ¶ 4(a)(iii).  See Priceline.com, Inc. v. Ryan G Foo / PPA Media Services, FA 135598 (Forum Aug. 18, 2016) (holding that registration of a domain name consisting of a slight misspelling of the complainant’s mark and affiliation of that domain name with the complainant’s affiliate program constituted bad faith per Policy ¶ 4(a)(iii)). The Panel finds disruption of a complainant’s business and bad faith per Policy ¶ 4(b)(iii) even where a respondent is not commercially competitive with a complainant. See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Complainant argues the deception created by Respondent’s registration of a domain name confusingly similar to Complainant’s mark disrupts Complainant’s business by creating a false impression of source, sponsorship, affiliation, or endorsement. The Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii) and 4(b)(iii).

 

Complainant also argues Respondent’s use of the <ulta.info> domain name to display pornographic content is evidence of bad faith. Using a disputed domain name display adult-oriented material can demonstrate bad faith registration and use under Policy ¶ 4(a)(iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited,  FA1502001603444 (Forum Mar. 19, 2015) (“Respondent’s use of the disputed domain name to feature adult-oriented advertisements is further evidence of bad faith under Policy ¶ 4(a)(iii).”). The Panel recalls Complainant provides screenshots of the resolving webpage of the disputed domain name which displays pornographic content. See Compl. Ex. F. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

 

Finally, Complainant contends Respondent had actual or constructive knowledge of Complainant’s rights in the ULTA mark prior to registration of the disputed domain name. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of

it.”); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues that based on Complainant’s trademark registration and the fact that the mark is well-known. See Compl. Ex. C through E. The Panel finds Respondent had actual knowledge of Complainant’s rights in the ULTA mark prior to registration, thus constituting bad faith per Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ulta.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

August 20, 2019