Ulta Salon, Cosmetics & Fragrance, Inc. v. Stefan Lacey
Claim Number: FA2205001995989
Complainant is Ulta Salon, Cosmetics & Fragrance, Inc. (“Complainant”), represented by Caitlin R. Byczko of Barnes & Thornburg LLP, Indiana, USA. Respondent is Stefan Lacey (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ulta-products.com> and <ulta-rnd.com>, registered with GoDaddy.com, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2022; the Forum received payment on May 11, 2022.
On May 12, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ulta-products.com> and <ulta-rnd.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 18, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 2022 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-products.com, postmaster@ulta-rnd.com. Also on May 18, 2022, 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 June 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states that, since opening its first store over 30 years ago, it has become the largest beauty retailer in the United States and the premier beauty destination for cosmetics, fragrance, skin, hair care products and salon services. Through its online and brick-and-mortar stores, Complainant offers more than 25,000 products from over 500 well-established and emerging beauty brands across all categories and price points, including Complainant’s own private label. As of March 30, 2021, Complainant operates 1,297 retail stores across 50 states and the District of Columbia and also distributes its products through its website <www.ulta.com>. Complainant has rights in the ULTA mark through its registration in the United States in 2001. The mark is registered elsewhere around the world.
Complainant alleges that the disputed domain names are identical or confusingly similar to its ULTA mark as they incorporate the mark in its entirety and merely add the generic terms “products” and “rnd” (an acronym for “research and development”) along with a hyphen and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its ULTA mark in any way. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead diverts users to parked websites providing monetized hyperlinks to Complainant’s competitors.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent disrupts Complainant’s business by creating confusion as to the source and affiliation of the disputed domain name and derives revenue from the parked websites. Additionally, Respondent registered the disputed domain names with actual knowledge or, at minimum, constructive notice of Complainant’s rights in the ULTA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the mark ULTA dating back to at least 2001 and uses it to market beauty products.
The disputed domain names were registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to resolve to parked web sites that display advertising links to products that compete with those of Complainant.
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”).
The disputed domain names incorporate Complainant’s ULTA mark in its entirety and merely add the generic terms “products” and “rnd” (an acronym for “research and development”) along with a hyphen and the “.com” generic top-level domain (“gTLD”). Under Policy ¶ 4(a)(i), a domain name is generally considered confusingly similar to the mark it incorporates where it adds generic terms or acronyms, a hyphen, and the “.com” gTLD. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Sullivan & Cromwell LLP v. Kurt Lageschulte, FA2007001905702 (Forum Aug. 19, 2020) (Finding confusing similarity because “Complainant’s SULLCROM mark is the initial, dominant and only distinctive element in the disputed domain name. The hyphen has no distinguishing character nor do the letters ‘llp’ which would in context be taken as a commonplace generic acronym to designate a Limited Liability Partnership and for the purposes of comparison the gTLD <.com> extension may be ignored in the circumstances of this Complaint because as a top level domain extension, it would be recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.”); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Thus the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Complainant to use its mark. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here, the WHOIS information identifies the registrant of the disputed domain names as “Stefan Lacey”. Thus the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
The disputed domain names resolve to parked websites displaying pay-per-click advertising hyperlinks to products that compete with those of Complainant. Under Policy ¶¶ 4(c)(i) and (iii), using an infringing domain name to divert users to hyperlinks competing with complainant does not constitute a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant). Therefore the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, the resolving websites display advertising hyperlinks to competing products. Use of a confusingly similar domain name to display third-party commercial hyperlinks is evidence of bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
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-products.com> and <ulta-rnd.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: June 14, 2022
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