DECISION

 

Ulta Salon, Cosmetics & Fragrance, Inc. v. Jeff Smith

Claim Number: FA2108001959505

 

PARTIES

Complainant is Ulta Salon, Cosmetics & Fragrance, Inc. (“Complainant”), represented by Caitlin R. Byczko of Barnes & Thornburg LLP, Illinois, USA.  Respondent is Jeff Smith (“Respondent”), South Dakota, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <ulta-vip.com> and <ulta-rewards.com>, registered with NameCheap, Inc..

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 13, 2021; the Forum received payment on August 13, 2021.

 

On August 16, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <ulta-vip.com> and <ulta-rewards.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2021 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-vip.com, postmaster@ulta-rewards.com.  Also on August 17, 2021, 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 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.    Respondent’s <ulta-vip.com> and <ulta-rewards.com> domain names are confusingly similar to Complainant’s ULTA mark.

 

2.    Respondent does not have any rights or legitimate interests in the <ulta-vip.com> and <ulta-rewards.com> domain names.

 

3.    Respondent registered and uses the <ulta-vip.com> and <ulta-rewards.com> domain names in bad faith.

 

B.  Respondent did not file a Response.

 

FINDINGS

Complainant, Ulta Salon, Cosmetics & Fragrance, Inc., holds registrations for the ULTA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. 2,504,336, registered Nov. 6, 2001; Reg. 3.311.178, registered Oct. 16, 2007).

 

Respondent registered the <ulta-vip.com> and <ulta-rewards.com> domain names on May 22, 2021, and does not make an active use of them.

 

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

The Panel finds that Complainant has in the ULTA mark through its registrations with the USPTO.  See Phusion Projects, LLC vs. Ferg / Ferg Ferg, FA1912001874943 (Forum Jan. 8, 2020) (“Complainant’s USPTO registration of its FOUR LOKO mark establishes Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).

 

Respondent’s <ulta-vip.com> and <ulta-rewards.com> domain names use the ULTA mark, and add a hyphen, the words “vip” or “rewards”, and the “.com” gTLD.  These changes do not distinguish a domain name from a mark under Policy ¶ 4(a)(i)See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). Therefore, the Panel finds that Respondent’s <ulta-vip.com> and <ulta-rewards.com> domain names are confusingly similar to Complainant’s ULTA mark. 

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 that Respondent has no rights or legitimate interests in the <ulta-vip.com> and <ulta-rewards.com> domain names, as it is not commonly known by the domain names.  Complainant has not authorized Respondent to use its ULTA mark in the disputed domain names.  The WHOIS of record identifies Respondent as “Jeff Smith.”  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(ii).  See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy  ¶ 4(c)(ii).”).

 

Complainant argues that Respondent does not use the <ulta-vip.com> and <ulta-rewards.com> domain names for a bona fide offerings of goods or services or a legitimate noncommercial or fair use.  Under Policy ¶¶ 4(c)(i) and (iii), inactively holding a disputed domain name is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.  See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Complainant provides screenshots of the disputed domain names’ resolving websites, which feature no content but error messages.  Therefore, the Panel finds that Respondent does not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus has no rights under Policy ¶¶ 4(c)(i) or (iii).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <ulta-vip.com> and <ulta-rewards.com> domain names in bad faith by inactively holding them.  The Panel agrees and finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).  See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).

 

The Panel finds that Complainant has satisfied 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-vip.com> and <ulta-rewards.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  September 14, 2021

 

 

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