ULTA Salon,Cosmetics & Fragrance, Inc. v. ultabeauty-outlet.com
Claim Number: FA1505001619434
Complainant is ULTA Salon, Cosmetics & Fragrance, Inc. (“Complainant”), represented by Brian J. McGinnis of Barnes & Thornburg LLP, Indiana, USA. Respondent is ultabeauty-outlet.com (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ultabeauty-outlet.com>, registered with Shinjiru MSC Sdn Bhd.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 14, 2015; the Forum received payment on May 15, 2015.
On May 16, 2015, Shinjiru MSC Sdn Bhd confirmed by e-mail to the Forum that the <ultabeauty-outlet.com> domain name is registered with Shinjiru MSC Sdn Bhd and that Respondent is the current registrant of the name. Shinjiru MSC Sdn Bhd has verified that Respondent is bound by the Shinjiru MSC Sdn Bhd 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, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2015 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@ultabeauty-outlet.com. Also on May 18, 2015, 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 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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
1. Policy ¶ 4(a)(i)
a. Complainant has rights in the ULTA BEAUTY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,262,918, registered on July 10, 207).
b. Respondent’s <ultabeauty-outlet.com> domain name is confusingly similar to Complainant’s ULTA BEAUTY mark because it is differentiated by only the addition of a hyphen, the word “outlet,” and the generic top-level domain (“gTLD”) “.com.”
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the disputed domain name even though the WHOIS information lists “ultabeauty-outlet.com ultabeauty-outlet.com” as Registrant because Respondent has not submitted any evidence to indicate being commonly known by the disputed domain name. Moreover, Respondent is not authorized to use Complainant’s ULTA BEAUTY mark.
b. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses the resolving website to compete with Complainant.
3. Policy ¶ 4(a)(iii)
a. Respondent fail Respondent uses the resolving website to attract Internet users for commercial gain by capitalizing on their confusion about Complainant’s connection to the website.
b. Respondent registered the <ultabeauty-outlet.com> domain name with actual knowledge of Complainant’s rights in the ULTA BEAUTY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <ultabeauty-outlet.com> domain name was created on November 14, 2014.
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(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.”).
Complainant is a producer and seller of salon products and services throughout the United States. Complainant alleges it has rights in the ULTA BEAUTY mark through its registration with the USPTO (Reg. No. 3,262,918, registered on July 10, 2007). Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Past panels have also found that registration in a respondent’s country of operation is not required, so long as rights can be established somewhere. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, the Panel finds that Complainant has rights in the ULTA BEAUTY mark.
Complainant alleges that Respondent’s <ultabeauty-outlet.com>domain name is confusingly similar to Complainant’s ULTA BEAUTY mark because it is differentiated by only the addition of a hyphen and the word “outlet”. Past panels have found that hyphens are irrelevant. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Complainant urges that the word “outlet” is a generic term that does not do anything to remove the domain name from the realm of confusing similarity. Past panels have agreed that adding generic terms to a mark creates a confusingly similar domain name. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Therefore, the Panel finds that Respondent’s <ultabeauty-outlet.com> domain name is confusingly similar to Complainant’s ULTA BEAUTY mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent is not commonly known as the disputed domain name. The Panel notes that the WHOIS information lists “ultabeauty-outlet.com ultabeauty-outlet.com” as Registrant. Complainant argues that this does not show Respondent is commonly known by the domain name because it has not provided evidence of being commonly known by the domain prior to its registration. The Panel notes Respondent has failed to provide further evidence to indicate being commonly known by the domain name. Complainant also submits evidence that Respondent’s provided e-mail addresses fail to deliver e-mails to Respondent. Moreover, Complainant urges that Respondent is not authorized to use Complainant’s mark. Past panels have found such a lack of evidence sufficient to support a finding that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). Accordingly, the Panel finds that Respondent is not commonly known by the <ultabeauty-outlet.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate and noncommercial fair use because Respondent uses the resolving website to compete with Complainant. Complainant urges that Respondent uses the resolving website to sell substantially similar products to those sold by Complainant. Past panels have found competing use to show a lack of bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). As Respondent uses a confusingly similar domain name to compete with Complainant, Respondent fails to provide a bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant argues that Respondent is attempting to pass itself off as Complainant. Complainant has provided screenshots of Respondent’s website and its own website for comparison to demonstrate this attempted passing off. Past panels have also found the use of a disputed domain name and substantially similar website to pass off as a complainant to show a lack of bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel agrees with Complainant and finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent uses its resolving website to take advantage of the confusion of Internet users for financial gain by using the <ultabeauty-outlet.com> domain name to confuse Internet users about the identity of Respondent. Complainant argues that Respondent uses its resolving website to compete directly with Complainant by selling substantially similar goods, while doing so on a website which displays Complainant’s ULTA BEAUTY mark. Complainant has provided documentation of such use. Past panels have found the use of a confusingly similar domain name to compete with a complainant to constitute bad faith in use and registration pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). The Panel finds such competitive behavior by Respondent here and holds that Respondent registered and uses the <ultabeauty-outlet.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ULTA BEAUTY mark. Complainant urges that because Respondent displays the ULTA BEAUTY mark on its resolving website, and because Respondent’s behavior only makes sense if Respondent intended to take advantage of Complainant’s goodwill and reputation, Respondent must have been aware of Complainant’s rights in the ULTA BEAUTY mark at the time of registration. Past panels have found that when respondents have actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
The Panel determines that it can be inferred from the evidence that Respondent had actual knowledge of Complainant’s rights in the ULTA BEAUTY mark at the time of registration, and the Panel therefore finds that Respondent registered the <ultabeauty-outlet.com>domain in bad faith under Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ultabeauty-outlet.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: June 25, 2015
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