DECISION

 

HairUWear Inc. v. Vince Harasymiak / Domain Capital

Claim Number: FA2407002108846

 

PARTIES

Complainant is HairUWear Inc. ("Complainant"), represented by Amy Brozenic of Lathrop GPM LLP, Missouri, USA. Respondent is Vince Harasymiak / Domain Capital ("Respondent"), represented by Jason Schaeffer of ESQwire.com, P.C., New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hairdo.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Steven M. Levy and David P. Miranda as Panelists, and Charles A. Kuechenmeister as Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 30, 2024; Forum received payment on July 30, 2024.

 

On July 30, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <hairdo.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 August 5, 2024, Forum served the Complaint and all Exhibits, including a Written Notice of the Complaint setting a deadline of August 30, 2024 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@hairdo.com. Also on August 5, 2024, 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.

 

A timely Response was received and determined to be complete on August 30, 2024.

 

On September 6, 2024 Forum received Complainant's Supplemental Submission and on September 9, 2024 it received Reply to Complainant's Unsolicited Additional Submission.

 

On September 11, 2024, pursuant to Respondent's request to have the dispute decided by a three-member Panel, Forum appointed Steven M. Levy and David P. Miranda as Panelists and Charles A. Kuechenmeister as Chair.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant provides alternative hair products and services, including wigs, hair pieces, and hair extensions, under the HAIRDO. mark. It has rights in the mark based upon its registration with the USPTO. The domain name is identical or confusingly similar to Complainant's mark because it fully incorporates the mark, merely omitting the period and adding the ".com" generic top-level domain (gTLD).

 

Respondent has no rights or legitimate interests in the domain name. It is not affiliated with Complainant and Complainant has not licensed or authorized Respondent to use its mark, Respondent is not commonly known by the domain name, and Respondent is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because it is making no active use of it and is offering it for sale.

 

Respondent registered and is using the domain name in bad faith. It acquired the domain name with constructive or actual knowledge of Complainant and its mark, the domain name is currently inactive, and Respondent offers it for sale at a price which exceeds the direct costs associated with it in a manner which causes a likelihood of confusion with Complainant's mark.

 

B. Respondent

Respondent acquired the domain name pursuant to an agreement with a prior owner of the domain name in which the prior owner transferred a small portfolio of domain names, including the domain name involved in this proceeding, to Respondent. Respondent is in the business of buying and selling common word domain names and acquired this domain name and the others it acquired at the same time because of their inherent investment value. It had no knowledge of Complainant and did not register the domain name to interfere with Complainant or its operations. Complainant's mark is a common word and the public does not associate it with Complainant. Neither Complainant nor its mark is famous

 

Buying and selling commercially valuable domain names without targeting a mark holder is a legitimate interest. There is no evidence that it targeted Complainant.

 

The domain name was first registered in 1998 and has had many different owners since then. Complainant's delay in taking action raises the inference that Complainant did not believe it had exclusive rights to the term "hairdo" or "hair do" as a mark or that the <hairdo.com> domain name was being registered and used in bad faith.

 

Complainant is guilty of reverse domain name hijacking.

 

C. Complainant Additional Submission

Respondent was attracted to the domain name because of its value as it relates to Complainant. The manner in which Respondent markets the domain name is distinct from that in which it markets its other domain names. The web page advertising the domain name lists its price as $125,000, which is far in excess of the prices, ranging from $10,000 to $25,000, listed for its other domain names. Further, while the other domain names are listed on generic parking pages giving only basic information about them, the domain name is given special treatment, affirmatively promoting it for use in connection with hair services, specifically including hair extensions, which is a specialty of complainant. This demonstrates targeting in an effort to promote a sale to Complainant or a competitor.

 

Further, Respondent's references to "hair do" as a common word do not account for the fact that Complainant's mark consists of one word, not two, and has a distinctive period at the end. Google searches of "hairdo" and "hair do" show how popular Complainant's mark is with the general public. Respondent's argument focuses on the term "hair do" (two words) referring to hair styles or other generic definitions and this is misleading. Respondent registered and is using the domain name because it sees an opportunity either to trade on Complainant's goodwill or disrupt its business.

 

Complainant's delay in commencing this proceeding consists only of the year or so between July 12, 2023, when Respondent acquired the domain name, until July 30, 2024, when Complainant initiated this proceeding.

 

D. Respondent Additional Submission

Complainant has rights in the HAIRDO. mark for the purposes of Policy ¶ 4(a)(i), but that does not (i) mean that Complainant has exclusive rights to a common word, "hairdo" or "hair do," that has been subject to massive third-party use for years and (ii) does not alter the fact that Respondent acquired the domain name because of its inherent investment value. Further, the nature of the domain name system means there are no spaces between words in domain names.

 

The fact that the landing page advertising the domain name for sale shows that the domain name could be used in connection with the obvious generic meaning of the term does not demonstrate targeting.

 

Respondent is entitled to a finding of reverse domain name hijacking.

 

FINDINGS

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the 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 as follows with respect to the matters at issue in this proceeding.

 

Identical and/or Confusingly Similar

The HAIRDO. mark was registered to Celebrity Signatures International, Inc. with the USPTO (Reg. No. 3,531,075) on November 11, 2008 and was subsequently assigned to Complainant (TSDR printout included in Complaint Exhibit B).  Complainant's ownership of this USPTO registration establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i).  DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

Respondent's <hairdo.com> domain name is identical or confusingly similar to Complainant's HAIRDO. mark. It fully incorporates the mark, merely adding a gTLD. This change does not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i). Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs."). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the change described above, Complainant's mark is clearly recognizable within the domain name, and the domain name is likely to cause confusion.  

 

For the reasons set forth above, and considering that Respondent does not contest Complainant's rights in the mark or the domain name's confusing similarity for the purposes of Policy ¶ 4(a)(i), the Panel finds that the domain name is identical or confusingly similar to Complainant's HAIRDO. mark, in which Complainant has demonstrated rights. 

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii)                      The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii)                      The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because (i) it is not affiliated with Complainant and Complainant has not licensed or authorized Respondent to use its mark, (ii) Respondent is not commonly known by the domain name, and (iii) Respondent is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because it is making no active use of it and is offering it for sale.  These allegations are addressed as follows:

 

Complainant states that it has not authorized or licensed Respondent to use its mark (Declaration of Complainant's Chief Financial Officer). Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.").

 

The information furnished to Forum by the registrar lists the named Respondent as the registrant of the domain name. These names bear no resemblance to the domain name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that the Respondent has not been commonly known by the domain name.

 

Complaint Exhibits G and K are screenshots of the <brandbucket.com> website, on which the domain name is offered for sale. Respondent is affirmatively advertising and offering the domain name for sale to the general public. A general offer to sell a domain name that targets a particular trademark is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii) and is thus evidence of a lack of rights or legitimate interests. Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) ("Accordingly, the Panel finds that Respondent's general attempt to sell the disputed domain name is further evidence of Respondent's lack of rights and legitimate interests under Policy ¶ 4(a)(ii) where "Respondent's website includes ten advertisements for various car rental services including 'Enterprise Rental Car'…".), Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) ("The Resolving parked page [displays pay-per-click website featuring directly competing advertisements and] advertises the sale of the [foxsports.nyc] domain name with the message 'Would you like to buy this domain?'  The Panel accepts this offer as demonstrative of Respondent's willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.").

 

The evidence furnished by Complainant establishes the required prima facie case. It is incumbent upon Respondent to come forward with any evidence that it has rights or legitimate interests in the domain name.

 

To that end, Respondent submits the Declaration of Vincent Harasymaik, one of the named Respondents and the founding member and principal of Respondent Domain Capital, LLC (the "Harasymiak Declaration"). It states as follows: Respondent acquired the domain name pursuant to an agreement with a prior owner in which the prior owner transferred a small portfolio of domain names, including the domain name involved in this proceeding, to Respondent. Respondent is in the business of buying and selling common word domain names and acquired this domain name and the others it acquired at the same time because of their inherent investment value. It had no knowledge of Complainant until it received a copy of the Complaint in this proceeding and did not register the domain name to interfere with Complainant or its operations. Complainant's mark is a common word and the public does not associate it with Complainant. Neither Complainant nor its mark is famous.

 

Respondent asserts that it is engaged in the legitimate business of domain investing. In this context, the critical factor in determining rights or legitimate interests is whether the Respondent acquired or registered the subject domain name with Complainant or its mark in mind. In other words, did the Respondent register and is it using the domain name because of its association with Complainant or because of its inherent value as a one-word domain name? Having to do with the question of actual knowledge¹ of Complainant and its mark, the analysis necessarily involves the question of bad faith as well as rights or legitimate interests.

 

The WHOIS printouts submitted as Respondent Exhibit 2 show that the domain name was updated on June 21, 2023, which tends to corroborate Mr. Harasymiak's statement that Respondent acquired the domain name at about that time. The exhibits submitted by Respondent do not corroborate his statement that Respondent acquired a number of other common word domain names at the same time, but Complainant does not appear to dispute this allegation, and the Panel takes it as true. Complainant's primary argument in support of its claim of targeting is that Respondent has treated the domain name much differently than any of the other domains it offers for sale. Complaint Exhibit G, submitted with the Complaint, is a screenshot of the brandbucket website as of July 17, 2024 advertising the domain name for sale at a price of $150,000. It displays much of the textual material with a magenta or purple background. Complaint Exhibit K, submitted with Complainant's Additional Submission, is a screenshot of the brandbucket website as of September 4, 2024 advertising the domain name for sale, at a price of $125,000, but it is somewhat more involved than the Exhibit G webpage in that it lists a number of key words associated with hair styles, including hair extensions, which is one of Complainant's specialty products. Complainant also submitted with its Additional Submission screenshots of other domain sale platforms advertising the other domain names listed by Respondent in its Response as being held by it for sale (Complaint Exhibits L through O inclusive). These webpages are of a generic nature, mostly in black and white and displaying little else but the domain name being advertised, without promotional material. With one exception, the list prices for these domain names are not given, but Respondent submitted screenshots of its ads for these same domain names at prices ranging from $10,306 to $25,000 (Respondent Exhibit 3). Complainant argues that the difference in treatment demonstrates that Respondent registered and is using the disputed domain name in a manner that targets Complainant and its mark.

 

Complainant also argues that Respondent mischaracterized the extent to which its mark is a common dictionary word. Respondent Exhibit 4, submitted with its Complaint, consists of pages from a Google search of the term "hair do," which do not reflect Complainant or its mark. In response, Complainant submitted screenshots of a Google search for its mark, "Hairdo.," one word with period at the end. Two entries on these pages do in fact refer to Complainant by its corporate name and by its HAIRDO. mark, but the other entries relate to wigs and hair extensions and hairpieces and the like, generically. The fact remains that Complainant's mark is weak, and the evidence of its being well-known as a source indicator for Complainant is very thin at best.

 

The Panel acknowledges the difference in Respondent's treatment of the domain name as demonstrated by the exhibits discussed above but the body of evidence, taken as a whole, falls short of demonstrating that Respondent was aware of Complainant and its mark when it acquired the domain name or that it acquired the domain name to target this Complainant.  The mark is essentially a common word, the period notwithstanding, and even if Respondent is currently marketing the domain name in such a way as to target Complainant, giving Complainant's argument the full benefit of any doubt, there is absolutely no evidence that Respondent acquired the domain name with Complainant and its rights in mind.  As such, the Panel finds that Respondent is engaged in the bona fide service of investing in and offering for sale a domain name which consists of a generic word that does not target Complainant's trademark.

 

On the evidence discussed above, the Panel finds that Respondent has demonstrated its rights or legitimate interests in the domain name.

 

Registration or Use in Bad Faith

The evidence and reasoning discussed above in the rights or legitimate interests analysis also supports a finding of no bad faith registration and use. It is evident that Respondent had no actual knowledge of Complainant and its mark when, according to the undisputed allegations in the Response, it acquired the domain name in June 2023. No other grounds for bad faith are alleged, and the evidence neither discloses nor supports any. The Panel finds that Respondent did not register the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

REVERSE DOMAIN NAME HIJACKING

Respondent argues that Complainant should have known that its filing of the Complaint was an abuse of the Policy and that it should be found to have engaged in reverse domain name hijacking. The Panel is not persuaded. Complainant has managed to record incontrovertible rights in its HAIRDO. mark with the USPTO, and its claim of no rights or legitimate interests based upon the difference in Respondent's treatment of the domain name, though flawed due to Respondent's prerogative to seek any price it wishes for a generic-word domain name, has at least a minimal color of validity and was supported by evidence. Respondent's claim of reverse domain name hijacking is rejected.

 

DECISION

Complainant having failed to established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <hairdo.com> domain name REMAIN WITH Respondent.

 

Complainant is not guilty of reverse domain name hijacking.

 

 

 

 

Charles A. Kuechenmeister, Chair

Steven M. Levy, Panelist

David P. Miranda, Panelist

 

Dated: September 19, 2024