Golden Door Properties, LLC v. Golden Beauty / goldendoorsalon
Claim Number: FA1604001668748
Complainant is Golden Door Properties, LLC (“Complainant”), represented by Niky Economy Syrengelas of Crockett & Crockett, PC, California, USA. Respondent is Golden Beauty / goldendoorsalon (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goldendoorsalon.net>, registered with Melbourne IT Ltd.
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 April 4, 2016; the Forum received payment on April 4, 2016.
On April 7, 2016, Melbourne IT Ltd confirmed by e-mail to the Forum that the <goldendoorsalon.net> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd 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 April 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2016 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@goldendoorsalon.net. Also on April 11, 2016, 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 May 4, 2016, 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 has rights in the GOLDEN DOOR mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 943,405, registered on September 19, 1972). Respondent’s <goldendoorsalon.net> domain name is confusingly similar to the GOLDEN DOOR mark because it contains the mark, along with the term “salon” and the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the <goldendoorsalon.net> domain name because it had notice of Complainant’s rights.
Respondent registered the <goldendoorsalon.net> domain name in bad faith because it did so with constructive or actual knowledge of Complainant’s rights in the GOLDEN DOOR mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of beauty parlor services.
2. Complainant has rights in the GOLDEN DOOR mark through the registration of the mark with the USPTO (Reg. No. 943,405, registered on September 19, 1972) and its assignment to Complainant.
3. Respondent registered the disputed <goldendoorsalon.net> domain name on July 17, 2013.
4. Respondent registered the disputed domain name with actual knowledge of Complainant’s GOLDEN DOOR trademark.
5. Respondent uses the disputed domain name to resolve to a website promoting services similar to Complainant.
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 (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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims rights in the GOLDEN DOOR mark through its registration with the USPTO (Reg. No. 943,405, registered on September 19, 1972). Complainant has also provided, in Exhibit B, assignement information for the mark, naming itself as Assignee. Accordingly, the Panel finds that Complainant has rights in the GOLDEN DOOR mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME, by virtue of an assignment).
The second issue that arises is whether the disputed <goldendoorsalon.net> domain name is identical or confusingly similar to Complainant’s GOLDEN DOOR mark. Complainant argues that Respondent’s <goldendoorsalon.net> domain name is confusingly similar to the GOLDEN DOOR mark because it contains the mark, along with the term “salon” and the gTLD “.com.” The Panel also notes that the domain also lacks the space between the words of the mark. Complainant urges that “salon” is either generic or descriptive, and, therefore, inconsequential to Policy ¶ 4(a)(i). As the Panel agrees, it finds that the <goldendoorsalon.net> domain name is confusingly similar to the GOLDEN DOOR mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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)).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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.”).
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 GOLDEN DOOR mark and to use it in its domain name and has added the generic word “salon” which does not detract from the confusing similarity that is clearly present but suggests that the domain name is referring to a salon where Complainant conducts its business of the provision of beauty parlor services;
(b) Respondent registered the disputed domain name on July 17, 2013;
(c) The domain name resolves to a website that promotes services similar to those of Complainant;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant contends that Respondent lacks rights and legitimate interests in the <goldendoorsalon.net> domain name. In order to demonstrate this, Complainant alleges that Respondent had notice, whether actual or constructive, of Complainant’s rights in the GOLDEN DOOR mark and that Respondent’s use is not authorized by Complainant. While constructive notice has often not been accepted as evidence of knowledge of a complainant’s trademark, in the present case the evidence is such that the Panel infers actual knowledge. The inference is justified by the fact that, as Complainant submits, Respondent has registered the “.net” domain name and if it had tried to registered the “.com” domain name, which it probably did, it would have been directed to Complainant’s own website and hence been made aware of Complainant’s trademark and the business activities being conducted under that name. Moreover, the Panel finds that the GOLDEN DOOR mark is sufficiently famous, distinct, or longstanding and substantial in use, that the Panel can infer actual knowledge. Respondent therefore lacks rights and legitimate interests in the <goldendoorsalon.net> domain name under Policy ¶ 4(a)(ii). See Nike, Inc. v. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing the complainant's distinct and famous NIKE trademark); see also Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Nat. Arb. Forum Dec. 22, 2003) (“[I]t would be difficult for Respondent to demonstrate that it had rights or legitimate interests in the domain name given Complainant's long and substantial use of its unique and famous XEROX mark.”).
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 has no rights or legitimate interests 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, although Complainant makes no arguments about Respondent’s alleged bad faith registration and use which are specifically enumerated under Policy ¶ 4(b), prior UDRP panels have found that the Policy is not limited to the specifically named manners of bad faith registration and use. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”)
Complainant maintains that Respondent registered the <goldendoorsalon.net> domain name in bad faith because it did so with constructive or actual knowledge of Complainant’s rights in the GOLDEN DOOR mark. Complainant urges that Respondent’s knowledge can be inferred from Complainant’s USPTO registration of the mark. Further, Complainant specifically argues that Respondent had actual knowledge of Complainant’s rights because Complainant owns the <goldendoorsalon.com> domain name, which implies that Respondent attempted to register the “.com” version and then could not do so because Complainant already owned it. As the Panel finds these arguments sufficient to show that Respondent had actual, rather than merely constructive, knowledge of Complainant’s rights in the GOLDEN DOOR mark at the time of registration, it finds that Respondent registered the <goldendoorsalon.net> domain name in bad faith. 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); but see Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”).
Secondly, Complainant makes no specific arguments regarding the manner in which Respondent uses the <goldendoorsalon.net> domain name. However, as the disputed domain name is necessarily part of the evidence, the Panel, after examining the website, finds that the domain name resolves to a website promoting what is called the Golden Door Salon offering similar beauty parlor services as Complainant. That enables the Panel to infer that Respondent has both registered and used the domain name in bad faith.
Thirdly, the totality of the evidence enables the Panel to conclude that the disputed domain name and its use must give rise to confusion as to whether the services being offered under it are those of Complainant, thus bringing the case squarely within the provisions of Policy ¶ 4(b)(iv).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <goldendoorsalon.net> domain name using the GOLDEN DOOR mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
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 <goldendoorsalon.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 7, 2016
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