Ulta Salon, Cosmetics & Fragrance, Inc. v. PRIVACYDOTLINK CUSTOMER 221308
Claim Number: FA1408001577537
Complainant is Ulta Salon, Cosmetics & Fragrance, Inc. (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is PRIVACYDOTLINK CUSTOMER 221308 (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ultas.com>, registered with Uniregistrar Corp.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on August 29, 2014; the National Arbitration Forum received payment on September 2, 2014.
On August 29, 2014, Uniregistrar Corp confirmed by e-mail to the National Arbi-tration Forum that the <ultas.com> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar 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 3, 2014, the Forum served the Complaint and all Annexes, includ-ing a Written Notice of the Complaint, setting a deadline of September 23, 2014 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, adminis-trative, and billing contacts, and to postmaster@ultas.com. Also on September 3, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 September 26, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Complainant uses the ULTA service mark in association with the marketing of its many salon and salon services products and services.
Complainant has rights in the ULTA service mark by reason of its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Regis-try No. 2,504,336, registered November 6, 2001).
Respondent registered the <ultas.com> domain name on December 20, 2001.
Respondent’s <ultas.com> domain name is confusingly similar to Complainant’s ULTA mark.
Respondent has never been licensed or otherwise authorized to use Complain-ant’s ULTA mark.
Respondent has never been commonly known by the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent uses the domain name for criminal purposes by generating an e-mail address to impersonate Complainant while defrauding third parties.
Respondent also uses the domain name to divert Internet users to a website from which it gains revenue by the operation of pay-per-click advertising links.
Respondent knew of Complainant and its rights in the ULTA mark when it regis-tered the disputed domain name.
Respondent registered and is using the <ultas.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the ULTA service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”). See Priceline.com, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1547179 (Nat. Arb. Forum Apr. 24, 2014) (finding that USPTO registration satisfies the require-ment of Policy ¶ 4(a)(i) that a UDRP complainant have rights in a mark in order to advance a claim that a domain name is identical or confusingly similar to that mark).
This is true without regard to whether Complainant has acquired rights in its mark by virtue of its registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Cayman Islands). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP com-plainant can demonstrate rights in its mark in some jurisdiction).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that Respondent’s <ultas.com> domain name is confusingly similar to Complainant’s ULTA service mark. The domain name contains the entire ULTA mark, with only the addition of the letter “s” and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the do-main name, do not save it from the realm of confusing similarity under the stand-ards of the Policy. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
And, on the point of a slight change in the spelling of a mark in creating a domain name, see Pride Studios Inc. v. Global Access, FA 1154068 (Nat. Arb. Forum Apr. 17, 2008), finding confusing similarity notwithstanding that: “[i]n each case the names are identical except for the deletion of an “s” (i.e., transforming a plural reference to the singular.”
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Complainant has never authorized Respondent to use Complainant’s ULTA service mark, and that Respondent has never been commonly known by the <ultas.com> domain name. Moreover, the pertinent WHOIS information identi-fies its registrant only as “PRIVACYDOTLINK CUSTOMER 221308,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding, based on the relevant WHOIS information and other evidence in the record, that a UDRP respondent was not commonly known by the <cigaraficionada.com> domain name and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii)).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the disputed domain name to generate an e-mail address to impersonate Complainant while defrauding third-parties. This employment of the domain name is neither a bona fide offering under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into revealing their credit card numbers and other personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
In addition, Complainant also alleges, again without objection from Respondent, that Respondent uses the disputed domain name to divert Internet users to a commercial website by which it profits from the receipt of click-through fees tied to the operation of associated links to the websites of various commercial enter-prises. This use is likewise neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that a respondent’s use of a UDRP complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to that respondent’s own website for commercial gain did not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the <ultas.com> domain name as alleged in the Complaint shows that Respondent has regis-tered and uses the domain name in bad faith as that term is used in Policy ¶ 4(a)(iii). See, for example, Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use of a domain name where a respondent used it to direct Internet users to a website that imi-tated a UDRP complainant’s site fraudulently to acquire personal information from that complainant’s clients).
And, that Respondent seeks to profit from the employment of a domain name that is confusingly similar to Complainant’s ULTA service mark also stands as evidence of bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where a respondent employed it to divert to its own website Internet users searching for the website of a UDRP complainant, likely profiting in the process).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <ultas.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 29, 2014
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