Generic Top Level Domain Name (gTLD) Decisions

DANIEL GALVIN,
HAIR COLOUR CONSULTANTS LIMITED,
DANIEL GALVIN PRODUCTS DIVISION LIMITED,
and DANIEL GALVIN LIMITED
COMPLAINANT,

vs.

RELIABLEMARKETING
RESPONDENT.

DECISION
Forum File No.:  FA0005000094802

            The above entitled matter came on for an administrative hearing on June 15, 2000 before the undersigned Arbitrator on the complaint of DANIEL GALVIN, HAIR COLOUR CONSULTANTS LIMITED, DANIEL GALVIN PRODUCTS DIVISION LIMITED, and DANIEL GALVIN LIMITED, (Complainants) represented by Alex Chapman, Esq. at BRIFFA Solicitors, against RELIABLEMARKETING (Respondent) represented by , Usha Amonkar.  Upon the written submitted record, including the Complaint and attached Exhibits and the Response, I hereby render the following decision:

PROCEDURAL FINDINGS

Domain Name:  DANIELGALVIN.COM

Domain Name Registrar:  Network Solutions, Inc.

Domain Name Registrant:  RELIABLEMARKETING

Date of Domain Name Registration:  January 16, 2000

Date Complaint Filed: May 10, 2000

Date Complaint Commenced: May 15, 2000

Date Answer Filed:  June 5, 2000

After reviewing the Complaint and determining it to be in administrative compliance, the National Arbitration Forum (Forum) forwarded the Complaint to Respondent in compliance with Rule 2(a) and the administrative proceeding was commenced pursuant to Rule 4(c) in compliance with Rule 4(d).  The Forum immediately notified Network Solutions, Inc., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and Respondent that the administrative proceeding had commenced.  Respondent has now submitted a Response to the Forum within the twenty (20) days pursuant to Rule 5(a) which time has now expired.  The Complaint and Exhibits and Response were docketed and forwarded to the undersigned Arbitrator for decision.

On January 16, 2000, Respondent registered the domain name DANIELGALVIN.COM with the domain name registrar Network Solutions, Inc., the entity that is the registrar of the domain name.  Network Solutions, Inc. verified that Respondent is the registrant for the domain name DANIELGALVIN.COM and that by registering its domain name with Network Solutions, Inc., Respondent agreed to resolve any disputes regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution policy.  Thus, although Respondent has contested the jurisdiction of the Forum, I find that the Forum has jurisdiction to resolve this controversy.

FINDINGS OF FACT

1. Complainant Daniel Galvin (Daniel Galvin) has built a reputation as one of the world’s leading authorities on hair color and is often referred to as the ‘King of Color’.  His work has a great influence on the industry as a whole and he is in great demand for his expertise.  Daniel Galvin trained in the 1960s with several of London’s new generation of hair innovative hairdressers and thereafter, revolutionized the way in which hair was colored.  Introducing new highlighting techniques, henna, vegetable dyes etc.  Daniel Galvin established his own business in the early 1970s and incorporated Complainant Hair Colour Consultants Limited, (Hair Colour), a company incorporated in England and Wales under company no. 01105855.  Daniel Galvin set up his first specialist hair colour salon, the first of its kind in Europe, under the name The Daniel Galvin Salon in the late seventies.  The salon is renowned and respected the world over as a center of excellence in all aspects of hair colour.  Moreover Daniel Galvin has written books and hosted hair seminars around the world.

2. Complainant Daniel Galvin Products Division Limited (Galvin Products) was incorporated by Daniel Galvin in England & Wales under company number 01478971 on February 13, 1980.  Complainant Daniel Galvin Limited (Galvin Limited) was incorporated by Daniel Galvin in England & Wales under company number 02975894 on October 6, 1994.

3. Galvin Limited is the registered proprietor of the trademarks Daniel Galvin registered in the UK under Certificate No. 1588296 and 1588297 for Class 16 and 41 respectively.  These trademarks are registered in the UK Patent Office.  Galvin Limited is also the registered proprietor of the trademark Daniel Galvin in the UK in Class 3 (1297784) and Class 42 (1297779) and as an European Community Trademark No. 001428556 in Classes 3, 16, 41 and 42.  These trademarks are registered in the UK and the European Community Trademark Office.  Galvin Limited has a pending application for a trademark in the United States Patent and Trademark Office for the trademark “Daniel Galvin” in Classes 3, 16, 41 and 42. 

4. Galvin Products manufactures and/or distributes and/or sells throughout the world a range of products bearing the trademark “Daniel Galvin”, including the Daniel Galvin Designer Hair Care Range, the Daniel Galvin Colour Care System, the Daniel Galvin Treatment Range, the Daniel Galvin Salon Hair Colour Range and the Daniel Galvin Totally Natural Colour Range for Men.

5. Hair Colour owns the following domain names:  Daniel-Galvin.Co.UK, Daniel-Galvin.Com and DanielGalvinHairColour.com.

6. Complainants have the exclusive right to use and license the “Daniel Galvin” trademarks and domain names.

7. On January 16, Respondent registered with Network Solutions, Inc. for domain name DANIELGALVIN.COM which is the subject of this complaint. 

8. Respondent’s domain name DANIELGALVIN.COM is identical or confusingly similar to Complainants’ trademarks and domain names in which Complainants have exclusive rights.  Respondent’s domain name DANIELGALVIN.COM is merely a copy of Daniel Galvin’s name as well as HairColour’s domain name DANIEL-GALVIN.COM.  Respondent’s use of Complainants’ trademarks and domain names bearing the name “Daniel Galvin” creates a likelihood of confusion and Complainants’ trademark users and consumers are likely to be confused into believing that there is some affiliation, connection, sponsorship, approval or association between Respondent and Complainants when, in fact, no such affiliation or association exists. 

9. Respondent is not a licensee of Complainants and has not obtained any authorization to use Complainants’ trademarks or domain names or to apply for any domain name incorporating any of those marks. 

10. Respondent has no rights or legitimate interests in the domain name DANIELGALVIN.COM.  Moreover, Respondent has no rights or legitimate interests in Complainants’ trademarks or domain names.  Customers seeking information concerning Complainants may easily key on DANIELGALVIN.COM looking for Complainants and would be surprised not to find Complainants’ site.

11. The domain name DANIELGALVIN.COM should be considered has having been registered by Respondent in bad faith due to the fact Respondent has intentionally attempted to attract internet users to its website by creating a likelihood of confusion with Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of its website.  The unauthorized and continued use by Respondent in interstate commerce of a domain name incorporating Complainants’ DANIEL GALVIN marks constitutes a use of a false designation of origin as well as a false description or representation that is likely to cause confusion, mistake or deception as to (a) the affiliation, connection or association between Complainants and Respondent and (b) the sponsorship or endorsement of Respondent’s website by Complainants.  See Rule 4(b)(iv).

12. Moreover, Respondent registered and used the domain name DANIELGALVIN.COM in bad faith as evidenced by the fact that Respondent registered the domain name primarily for the purpose of disrupting the business of its competitors, specifically Complainants.  See Rule 4(b)(iii).

13. Respondent’s activities constitute an infringement of Complainants’ rights in its Daniel Galvin trademarks and have caused and will continue to cause substantial and irreparable harm to Complainants and its business reputation and good will.  Complainants demand that Respondent transfer the name DANIELGALVIN.COM to Complainant, Daniel Galvin Limited.

14. Respondent’s registration and use of the domain name DANIELGALVIN.COM constitutes an infringement of Complainants’ rights in its “Daniel Galvin” trademarks and domain names and has caused and will continue to cause substantial and irreparable harm to Complainants and there business reputation and good will.  Complainants, therefore, demand that Respondent transfer the domain name DANIELGALVIN.COM to Complainant Daniel Galvin Limited.

CONCLUSION

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding.  Having been duly selected and being impartial and neutral, the undersigned makes the following findings and conclusions:

1.            The domain name DANIELGALVIN.COM registered by Respondent on January 16, 2000 is identical or confusingly similar to Complainants’ trademarks and domain names, the trademarks of which are registered with the UK Patent Office, the European Community Trademark Office or pending with the United States Patent and Trademark Office.  Complainants have all rights and interests in the “Daniel Galvin” trademarks and domain names.

2.            Respondent does not have any substantial rights or legitimate interests in respect to the domain name DANIELGALVIN.COM. 

3.            Respondent has registered and used the domain name DANIELGALVIN.COM in bad faith. 

DECISION

Based upon the above findings and conclusions and pursuant to Rule 4 (1) of the Rules of the Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum Supplemental Rules of ICANN’s Uniform Domain Resolution Policy, I hereby Order that:

1.            The domain name DANIELGALVIN.COM registered by Respondent Reliablemarketing be transferred forthwith to Complainant Daniel Galvin Limited, and

2.            Respondent Reliablemarketing shall cease and desist from any and all use of the domain name DANIELGALVIN.COM.

Dated:  June 20, 2000                                              Herman D. Michels, Arbitrator