Advanced Institute of Hair Design, Inc., Beauty Schools, Inc. and One Ten, Inc. v. Pantages Inc / Pantages
Claim Number: FA1109001408726
Complainant is Advanced Institute of Hair Design, Inc., Beauty Schools, Inc. and One Ten, Inc. (“Complainant”), represented by Daniel R. Johnson of Ryan Kromholz & Manion, S.C., Wisconsin, USA. Respondent is Pantages Inc / Pantages (“Respondent”), Venezuela.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vicibeauty.com>, registered with Power Brand Center Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2011; the National Arbitration Forum received payment on September 22, 2011.
On September 27, 2011, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <vicibeauty.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. 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 September 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 2011 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@vicibeauty.com. Also on September 29, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <vicibeauty.com> domain name is confusingly similar to Complainant’s VICI BEAUTY SCHOOL mark.
2. Respondent does not have any rights or legitimate interests in the <vicibeauty.com> domain name.
3. Respondent registered and used the <vicibeauty.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Advanced Institute of Hair Design, Inc., Beauty Schools, Inc. and One Ten, Inc., all are listed owners of the trademark registrations asserted. Throughout this decision, Complainants will be referred to in the singular as Complainant. Complainant submits the following trademark registrations that it owns with the United States Patent and Trademark Office ("USPTO"):
VICI Reg. No. 2,903,464 registered November 16, 2004;
VICI CAPILLI Reg. No. 2,903,465 registered November 16, 2004; &
VICI BEAUTY SCHOOL Reg. No. 3,015,363 registered November 15, 2005.
Respondent, Pantages Inc / Pantages, registered the <vicibeauty.com> domain name on February 23, 2010. Complainant has not submitted any evidence to show Respondent’s use of the domain name in question as discussed below.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant has submitted sufficient evidence to establish rights in its marks by submitting evidence of its trademark registrations with the USPTO as follows:
VICI Reg. No. 2,903,464 registered November 16, 2004;
VICI CAPILLI Reg. No. 2,903,465 registered November 16, 2004; &
VICI BEAUTY SCHOOL Reg. No. 3,015,363 registered November 15, 2005.
The Panel further finds that Complainant’s submitted marks are sufficient even though Respondent’s listed address is outside the United States. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant does not specify which mark is confusingly similar to the domain name, but the Panel finds that any of the three marks would work under the circumstances presented here. For the purposes of Policy ¶ 4(a)(i), the Panel notes that the <vicibeauty.com> domain name contains the majority of the VICI BEAUTY SCHOOL mark, removing only the space between the terms and the SCHOOL portion of the mark while adding the generic top-level domain (“gTLD”) “.com.” Past panels have found that these minor changes do not distinguish the disputed domain name. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in the <vicibeauty.com> domain name. Policy ¶ 4(a)(ii) requires Complainant to produce a prima facie case in support of such allegations. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”). Upon such a showing, the burden of proof will shift to Respondent to allow it to establish its rights in the domain name, if any exist. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”).
The Panel finds that Complainant has failed to produce a prima facie case under Policy ¶ 4(a)(ii). While Complainant contends that Respondent uses the domain name as a links directory website that contains third-party links to competing beauty companies, it has failed to produce any evidence of such use. Because of Complainant’s failure to provide screen-shot evidence of Respondent’s use of the domain name, the Panel cannot evaluate for itself Respondent’s use. Therefore, the Panel finds that Complainant has not produced a prima facie case in support of its assertions. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”); see also O.C. Seacrets, Inc. v. S. TradeWINs, Inc., FA 328042 (Nat. Arb. Forum Oct. 29, 2004) (“Complainant has provided no evidence as to the use of the <jamaicausa.com> domain name and has merely asserted that Respondent has no rights or legitimate interests, which is not sufficient to support a finding that Respondent lacks rights or legitimate interests.”).
The Panel finds that Policy ¶ 4(a)(ii) has not been satisfied.
Because the Panel found that Complainant did not satisfy Policy ¶ 4(a)(ii), the Panel declines to discuss Complainant’s arguments under Policy ¶ 4(a)(iii). See Vail Corp. & Vail Trademarks, Inc. v. Resort Destination Mktg., FA 1106470 (Nat. Arb. Forum Jan. 8, 2008) (finding it unnecessary to examine all three elements of the Policy once shown the complainant could not satisfy one element); see also Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
The Panel declines to analyze Respondent’s registration and use of the disputed domain name under Policy ¶ 4(a)(iii).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED without prejudice.
Accordingly, it is Ordered that the <vicibeauty.com> domain name REMAIN WITH Respondent.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: October 28, 2011
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