Head Kandy, LLC v. C HEAVEN
Claim Number: FA1902001830587
Complainant is Head Kandy, LLC (“Complainant”), represented by Gabriel Groisman of Groisman Law, PLLC, Florida, USA. Respondent is C HEAVEN (“Respondent”), represented by Annabel Hanratty of Urquhart-Dykes & Lord LLP, Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <headkandy.com>, registered with Tucows Domains Inc.
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.
Eugene I. Low as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 20, 2019; the Forum received payment on February 20, 2019.
On February 22, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <headkandy.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 February 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 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 firstname.lastname@example.org. Also on February 26, 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.
A timely Response was received and determined to be complete on March 20, 2019.
On March 27, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eugene I. Low 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant sells hair care accessories like electric curling irons, electric hair straighteners, flat irons, brushes and tote bags as well as hair care products like shampoos, conditioners, and hair oils. Complainant and its predecessor in interest have been using the HEAD KANDY mark as early as September 2015. Complainant has rights in the HEAD KANDY through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,494,867, registered Jun. 19, 2018). Additionally, Complainant has established common law rights through its efforts to build and promote the mark and through the goodwill and customer awareness and recognition associated with the mark. Respondent’s <headkandy.com> domain name is identical to Complainant’s mark as it merely adds the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in the <headkandy.com> domain name. Respondent is not affiliated with Complainant nor has Complainant given Respondent permission to use its mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent does not use the disputed domain name in connection with an active website as the disputed domain redirects Internet users to the domain <dirtylooks.com>. Additionally, Respondent sells products in competition with Complainant on the redirecting webpage.
Respondent registered and uses the <headkandy.com> domain name in bad faith. Respondent disrupts Complainant’s business by using the identical disputed domain name to redirect customers searching for Complainant’s products to Respondent’s own <dirtylooks.com> website for commercial gain. Respondent formerly used the disputed domain name to sell their own “Head Kandy” hair extensions, but such use ceased in 2013.
Complainant does not have rights in pending trademark applications. Complainant fails to provide evidence of common law rights. Respondent’s domain name is not identical or confusingly similar to Complainant’s HEAD KANDY mark.
Respondent has rights and legitimate interest in the <headkandy.com> domain name as Respondent sold products under the brand “headkandy” via the disputed domain name from 2006 until 2013 when Respondent had to rebrand to its current name MILK & BLUSH and the domain <dirtylooks.com>. Respondent has interest in maintaining the disputed domain name to ensure customers searching for Respondent’s products are suitably diverted to Respondent’s business under its new name, which is a bona fide offering of goods. Respondent’s registration of the domain name significantly predates Complainant’s rights in the HEAD KANDY mark.
Complainant fails to allege or establish grounds for bad faith registration, only alleging bad faith use. Respondent registered the domain name in 2006, nine years before Complainant’s stated first use of the HEAD KANDY mark in 2015 which is proves Respondent did not register the disputed domain name in bad faith. Additionally, Respondent uses the disputed domain name to ensure that customers searching for Respondent’s previous name are redirected to Respondent’s current business.
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.
Complainant asserts rights in the HEAD KANDY mark based on its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in a mark. Therefore, the Panel finds that Complainant has rights in the HEAD KANDY mark under Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <headkandy.com> domain name is identical to Complainant’s HEAD KANDY mark as Respondent merely deletes the space between the words of Complainant’s mark and adds the gTLD “.com.” The elimination of spacing and the addition of a gTLD are insufficient to distinguish a mark from a disputed domain name. Therefore, the Panel finds Respondent’s disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel considers that Complainant has not established this element.
Respondent argues it has rights or legitimate interest in the <headkandy.com> domain name because it did business under the brand “headkandy” via the disputed domain name from 2006 until 2013 when Respondent rebranded to MILK & BLUSH under the domain name <dirtylooks.com>. Complainant appears to accept that Respondent did sell through the website “Head Kandy” branded hair extensions until 2013.
A respondent can have rights or legitimate interest in a disputed domain name where a respondent provides evidence of doing business as or by reference to the disputed domain name. Respondent has provided various exhibits showing Respondent conducted business under the name “headkandy” via the disputed domain name from 2006 to 2013.
Respondent contends it does not use the <headkandy.com> domain name to divert customers from Complainant or profit from Complainant’s goodwill. Respondent argues it uses the disputed domain name to redirect customers searching for Respondent’s business under its previous name to Respondent’s business under its current name.
Further, Respondent argues that its registration of the domain name significantly predates Complainant’s rights in the HEAD KANDY mark. In this case, Respondent registered the domain name in 2006, and Complainant first used the HEAD KANDY mark only in 2015.
While the Panel has not been provided with evidence or explanation as to why the re-direction from the <headkandy.com> domain name is still necessary after some 5 to 6 years of Respondent's rebranding to MILK & BLUSH under the domain name <dirtylooks.com>, the Panel accepts Respondent's contention that it did use the headkandy brand in the past and that Respondent's registration of the domain name significantly predates Complainant's rights in the HEAD KANDY mark. In light of the history of Respondent's previous use and the absence of clear evidence that Respondent lacks rights or legitimate interests, the Panel finds in favour of Respondent under this element.
The Panel considers that Complainant has failed to satisfy this element.
Respondent registered the <headkandy.com> domain name in 2006, which predates Complainant’s interest or use in the HEAD KANDY mark in 2015 by nine years. Generally speaking, in the absence of contrary evidence, a domain name could not have been registered in bad faith if at that time the complainant's mark had yet to be in existence. This is because the domain name registrant could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights.
Furthermore, as discussed under the section of "Rights or Legitimate Interests", it is agreed by both sides that Respondent did business under the brand "headkandy” via the disputed domain name from 2006 until 2013. This provides Respondent with a legitimate reason for registration of the disputed domain name. Accordingly, the Panel finds that registration of the dispute domain name was not in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <headkandy.com> domain name REMAIN WITH Respondent.
Eugene I. Low, Panelist
Dated: April 1, 2019
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