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Roux Laboratories, Inc. d/b/a Colomer USA v. Sheldeez Beauty Salon [2005] GENDND 1584 (30 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Roux Laboratories, Inc. d/b/a Colomer USA v. Sheldeez Beauty Salon

Case No. D2005-0799

1. The Parties

Complainant is Roux Laboratories, Inc. d/b/a Colomer USA, Jacksonville, Florida, United States of America, represented by Holland & Knight LLC, United States of America.

Respondent is Sheldeez Beauty Salon, Sterling, Virginia, United States of America, represented by Arthur Robinson, III, United States of America.

2. The Domain Name and Registrar

The disputed domain name is <lottabody.com>. The registrar is Intercosmos Media Group d/b/a directNIC.com, New Orleans, Louisiana.

3. Procedural History

This action (the “Complaint”) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2005. On July 27, 2005, the Center transmitted by e-mail to Intercosmos Media Group d/b/a direct NIC.com a request for registrar verification in connection with the domain name at issue. On July 28, 2005, Intercosmos Media Group d/b/a direct NIC.com transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 (the “Policy”); the Rules for Uniform Domain Name Dispute Policy, dated October 24, 1999 (the “Rules”); and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 21, 2005. Respondent filed a Response with the Center on August 21, 2005.

The Center appointed John E. Kidd as the Sole Panelist (the “Panel”) in this matter on August 29, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is Roux Laboratories, Inc. d/b/a Colomer USA, a corporation duly organized and existing under the laws of the State of New York, having its principal place of business in Jacksonville, Florida. Complainant owns the rights to the word mark LOTTABODY, listed on the Supplemental Register since 1971, for hair styling and beauty salon products. Complainant also owns the stylized mark LOTTABODY, listed on the Principal Register since 1986, for hair styling products. Complainant has also registered the marks in several foreign countries. Complainant’s marks are currently valid and subsisting.

Complainant or its predecessor has manufactured and distributed in the United States and abroad various hair care products to beauty salons for resale and to consumers under the marks LOTTABODY since 1971.

Respondent owns and operates a beauty salon called “Sheldeez” in Herndon, Virginia. Respondent sells beauty supplies and hair care products at its salon and through its Sheldeez website. The hair care products offered for sale include LOTTABODY products manufactured and distributed by Complainant as well as a variety of other competitive hair care products. On May 12, 1999, Respondent registered the domain name in dispute, <lottabody.com>.

When an Internet user uses Respondent’s domain name, the user will see, upon entering the website, a sponsored link to “Sheldeez.com”. When a visitor selects the linked website, they will see an advertisement for Sheldeez Hair Products and Salon that does not specifically identify LOTTABODY products, but rather offers for sale a host of other competitive hair care products including Kera Care, Paul Mitchell, Dudley, Mizami, Silk 2, Design Essentials, Straight Request and Sheldeez’s very own hair care products. The linked website also includes a shopping list format for ordering various LOTTABODY products from “Sheldeez Hair Products & Salon” in Herndon, Virginia.

On January 18, 2005, Complainant for the first time sent a “cease and desist” letter via certified mail and e-mail to Respondent. Respondent did not reply.

On or about February 16, 2005, Complainant sent a follow up “cease and desist” letter to Respondent. Again, Respondent did not reply. On July 26, 2005, Complainant filed its Complaint against Respondent with the Center.

5. Parties’ Contentions

A. Complainant

Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied. More specifically, Complainant submits that (i) the domain name in dispute <lottabody.com> is identical or confusingly similar to the LOTTABODY marks in which Complainant has rights; (ii) Respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name was registered and is being used by Respondent in bad faith.

Complainant also contends that it has not “acquiesced” in the use of its marks and that Respondent is not “licensed or authorized to use Complainant’s marks in connection with the domain name”.

Complainant’s other contentions as to Respondent’s use and success of the marks and consumer confusion are primarily conclusory allegations without supporting evidence.

B. Respondent

Respondent concedes that the domain name in dispute is “visually similar” to Complainant’s mark.

Respondent contends that visitors to the website linked to the domain name are generally sophisticated and would not be confused. Respondent contends that since it sells genuine LOTTABODY products, it has a right to use Complainant’s marks. Respondent contends that it has a right and legitimate interest in the domain name, since it is using the domain name in connection with a bona fide offering of goods and services before any notice of the dispute as provided for in paragraph 4(c)(i) of the Policy. Respondent relies in part on Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187, as controlling.

Respondent contends that merely using the domain name does not diminish the value of Complainant’s marks nor does offering other hair care products by other manufacturers and competitors of Complainant on the linked website.

Respondent contends that Complainant has presented no evidence to support the assertion that Respondent has acted in bad faith other than that its domain name site is also Complainant’s brand name. Finally, Respondent contends that it is not a cyber-squatter who sought to sell back the domain name to Complainant for profit or to extort money from Complainant.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that a domain name should be transferred:

(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar Domain Name

Respondent admits that the domain name is “also its [Complainant’s] brand name” and concedes that the domain name is “visually similar” to Complainant’s mark.

As for Complainant’s word mark, the Panel finds that the domain name is identical to Complainant’s mark. The suffix “.com” is of no significance in this analysis.

As for Complainant’s stylized mark, the Panel finds that the domain name is identical to Complainant’s mark and is, in any event, confusingly similar to Complainant’s mark.

The fact that Complainant’s stylized mark incorporates a distinctive design element is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element. See Eperian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095. Therefore, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been established and satisfied by Complainant.

B. Respondent’s Rights or Legitimate Interests in the Domain Name in Dispute

The Policy provides several guidelines on how a respondent can demonstrate its rights or legitimate interests in a domain name. Paragraph 4(c)(i) of the Policy is especially applicable to this case.

Respondent appears to rely primarily on the fact that it is a reseller of LOTTABODY products and that it created and used the website to offer for sale and to sell genuine LOTTABODY products. Moreover, Respondent did so for approximately six years before receiving notice of this dispute. Respondent also used the domain name website to link to its own website that offered for sale many other competitive hair care products.

Neither party is clear on the business relationship, if any, between Complainant and Respondent. From the evidence submitted, the Panel concludes that Respondent is at least a reseller of LOTTABODY hair care products.

The Panel notes that different panels have addressed the issue of a reseller’s right to use a mark of another and this Panel adopts the view that, even if Respondent is a reseller of Complainant’s products, the collateral mark use necessary to allow the resale of Complainant’s products is not enough to give Respondent proprietary rights in Complainant’s marks and certainly not enough to confer the right to use the marks as a domain name. See The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 and Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079.

Other cases have differed as Respondent points out. See, Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. Even in these cases, however, in order to have a right or legitimate interest, panels have consistently found that the website linked to the disputed domain name should be limited to selling only Complainant’s goods and must accurately disclose the relationship with Complainant. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187.

Neither of these facts are present in this case. The evidence that was proffered shows that Respondent sells numerous competitive hair care products at the website linked to the domain name and that this activity appears to be an important part of Respondent’s business. Indeed, it appears difficult to make out any reference to products sold under the LOTTABODY mark on the website. The Panel finds that Respondent has not established a right or interest in the domain name as of the time of this registration in 1999.

However, this case has other facts that must be considered, namely the acts (or lack thereof) by Complainant. The record before the Panel appears to suggest that Complainant acquiesced for nearly six years in Respondent’s use of the domain name website and no evidence has been proffered to explain why Complainant appears to have waited for such a period before objecting to Respondent’s use of the domain name in dispute.

While there is no reference in the Policy or Rules to the relevance of delay or acquiescence by Complainant in filing its Complaint, paragraph 15(a) of the Rules provides that a panel shall make its decision “in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. In common law jurisdictions such as the United States, where both parties in this case reside, unexplained delays or acquiescence can be a proper laches defense. While operating in the different context of the Policy, this Panel accepts the availability of this defence under the Rules, since it is available under U.S. trademark law.

An unexplained and unreasonable delay by Complainant in commencing a proceeding, as appears to have happened in this case, is one of the necessary factors for a successful laches defense. However, this is not enough. To be successful in this defense, Respondent must also show that it relied upon Complainant’s delay to its detriment. The Panel has not found sufficient indications in the evidence in the case file to establish this. Consequently, the Panel finds that all of the factors necessary to establish a laches defense have not been proven.

The Panel finds that under the facts of this case and the evidence presented, Respondent has no rights or legimitate interest with respect to the domain name.

C. Domain Name Registered and Used in Bad Faith

Paragraph 4(b) of the Policy requires a showing of bad faith registration and use. Each of the parties have made allegations to support their respective positions. Unfortunately, most of the allegations are primarily conclusory and are not helpful in deciding this issue. However, the Panel finds that the weight of the evidence clearly suggests that Respondent, as a reseller of Complainant’s LOTTABODY brand of hair care products in 1999, was aware of Complainant’s marks and its right to those marks. This alone is sufficient to find that Respondent registered the domain name in bad faith.

It is also the Panel’s finding that the weight of the evidence also clearly suggests that Respondent deliberately and confusingly used and traded on Complainant’s marks with a view to attract and divert Internet users to its own linked website where Respondent offers for sale hair care products of Complainant’s competitors. The Panel again notes that Complainant’s LOTTABODY hair care products appear not to be listed in Respondent’s linked website, but only the hair care products of many of Complainant’s competitors. The Panel finds that is sufficient to constitute bad faith registration and use.

Because the weight of the evidence shows a deliberate attempt by Respondent to trade on Complainant’s marks for hair care products for commercial purposes, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For all of the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <lottabody.com> be transferred to Complainant.

John E. Kidd
Sole Panelist

Dated: September 30, 2005