Kim Mills, dba Ivy's Hair Salon v. ML Stursa
Claim Number: FA1901001826656
Complainant is Kim Mills, dba Ivy's Hair Salon (“Complainant”), represented by Martin L. Grogan of Grogan Enterprise Services, Washington, USA. Respondent is ML Stursa (“Respondent”), represented by Nobles, LLC, Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ivyshairsalon.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 23, 2019; the Forum received payment on January 23, 2019.
On January 24, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ivyshairsalon.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 January 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 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 postmaster@ivyshairsalon.com. Also on January 28, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 22, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions:
Complainant, Kim Mills, dba Ivy’s Hair Salon, is a hair salon in Washington. Complainant contracted Respondent to build a website for the salon in 2013. See Amend. Compl. Annex 2. Respondent’s <ivyshairsalon.com> domain name is identical to Complainant’s business name and provides information and services for Complainant’s business.
Respondent lacks rights and legitimate interests in the <ivyshairsalon.com> domain name because Respondent does not participate in Complainant’s business other than the contracted work of the website. Further, Respondent has failed to respond to all communication from Complainant.
Respondent registered and uses the <ivyshairsalon.com> domain name in bad faith because Respondent was contracted to build the website for Complainant but now denies the Complainant access to the website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant, Kim Mills, dba Ivy’s Hair Salon, is a hair salon in Washington.
2. Complainant has established its common law trademark rights in the IVY’S HAIR SALON mark based on its ownership of the business of the same name for almost six years and its use of the <ivyshairsalon.com> domain name from 2013 to 2017.
3. Respondent registered the <ivyshairsalon.com> domain name on May 15, 2013.
4. As Respondent was contracted by Complainant to register the domain name and build the website, but will not give Complainant access to the site, Respondent has no right or legitimate interest in the domain name and has registered and used it 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 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 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 (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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the IVY’S HAIR SALON mark based on its ownership of a business of the same name for almost six years and its use of the <ivyshairsalon.com> domain name from 2013 to 2017. While Complainant does not specifically argue that it has common law rights in the mark, the Panel may infer such rights from submitted evidence. See Lokai Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA 1763598 (Forum Jan. 22, 2018) (“While Complainant does not specifically argue that it has common law trademark rights in FIND YOUR BALANCE, the Panel finds Complainant’s evidence infers that the Complainant has acquired secondary meaning within the FIND YOUR BALANCE mark.”). A complainant’s use of a disputed domain name may indicate that a complainant has rights in the mark. See Marty Taylor Homes, Inc. v. JNPR Mgmt., FA 366170 (Forum Jan. 5, 2005) (finding that the complainant’s prior use of the disputed domain name, which was identical to the asserted trademark, was evidence of its rights in the mark). Here, Complainant has owned the Ivy’s Hair Salon business for almost six years. See Amend. Compl. Annexes 1 and 2. Additionally, Complainant had access to and used the disputed domain name for its business from 2013 until 2017. See Amend. Compl. Annexes 2 and 3. Therefore, the Panel concludes that Complainant has common law rights in the IVY’S HAIR SALON mark under Policy ¶ 4(a)(i) and that it acquired them at or before Respondent registered the disputed domain name.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s IVY’S HAIR SALON mark. Complainant contends that the <ivyshairsalon.com> domain name is identical to Complainant’s IVY’S HAIR SALON mark. The Panel notes that while Complainant does not make any specific arguments under Policy ¶ 4(a)(i), the sole difference between the disputed domain name and Complainant’s mark is a “.com” generic top-level domain (“gTLD”). Such changes to a complainant’s mark may not sufficiently mitigate any confusing similarity. See Leland Turner v. joseph derer, FA 1618086 (Forum June 25, 2015) (“The [<lelandturner.com>] Domain Name consists of the Complainant's unregistered mark LELAND TURNER plus the gTLD designation .com. The addition of the .com gTLD does not serve to distinguish the Domain Name from the Complainant's LELAND TURNER mark and the Panellist finds that this domain name is identical to a mark in which the Complainant has rights for the purpose of the Policy.”). As the Panel agrees, the Panel finds that the disputed domain name is identical to the IVY’S HAIR SALON mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s IVY’S HAIR SALON mark and to use it in the disputed domain name;
(b) Respondent registered the disputed domain name on May 15, 2013;
(c) Respondent has wrongly retained the registration of the domain name in its own name and has refused Complainant access to the website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <ivyshairsalon.com> domain name because Respondent is not known by the disputed domain name and Respondent did not participate in Complainant’s business. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The Panel notes that the WHOIS of record identifies Respondent as “ML Stursa” and no information in the record indicates that Respondent is known by the disputed domain name. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interest in the <ivyshairsalon.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent’s previous contractual relationship with Complainant does not allow Respondent to maintain ownership of the <ivyshairsalon.com> domain name. A former employee may lack rights and legitimate interests when using a former employer’s mark. See Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Forum Mar. 14, 2006) (holding that the respondent, the Chief Financial Officer of the complainant, was not authorized or licensed to register or use domain names that incorporate Complainant’s mark and therefore did not have rights or legitimate interests in the domain name containing the complainant’s mark). Here, Complainant hired Respondent to build the Complainant’s business website but Respondent registered the disputed domain name under her own name rather than Complainant’s name. See Amend. Compl. Annex 2. The Panel finds this evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(ii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent’s bad faith is demonstrated by Respondent’s initial failure to register the <ivyshairsalon.com> domain name under Complainant’s name. While Complainant makes no 4(b) arguments, the Panel may examine the totality of the circumstances. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). Therefore, the Panel determines that the totality of the circumstances evinces bad faith under Policy ¶ 4(a)(iii).
Secondly, Complainant argues that Respondent’s position as a former employee who registered the <ivyshairsalon.com> domain name in her own name further evinces bad faith. An employee who registers a disputed domain name in his or her own name rather than that of the business or owner may show bad faith under Policy ¶ 4(a)(iii). See Anbex Inc. v. WEB-Comm Techs. Group, FA 780236 (Forum Sept. 19, 2006) (finding bad faith registration and use where the complainant hired the respondent to register the disputed domain name and the respondent later re-registered the disputed domain name on its own behalf and refused to transfer it to the complainant once their business relationship ended). Here, Respondent initially registered the disputed domain name in her own name and never transferred it to the business or owner. See Amend. Compl. Annex 2. Further, Respondent gave Complainant access to the website and later revoked that access, failing to allow the Complainant to operate its own business page. Id. The Panel finds that Respondent’s actions indicate bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the IVY’S HAIR SALON mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Finally, the Panel finds that Complainant acquired its common law trademark at or before Respondent registered the disputed domain name.
Complainant has thus made out the third of the three elements that it must establish
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ivyshairsalon.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 25, 2019
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