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Sally Holdings, Inc. v. Registrant [2005] GENDND 256 (8 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sally Holdings, Inc. v. Registrant

Case No. D2004-1059

1. The Parties

The Complainant is Sally Holdings, Inc. of Denton, Texas, United States of America, represented by Roberts, Mlotkowski & Hobbes, P.C. of McLean, Virginia, United States of America.

The Respondent is Registrant of Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <sallysbeautysupplies.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2004. On December 15, 2004, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On December 16, 2004, OnlineNic, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 7, 2005. The Center verified that the Complaint, together with the Amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2005.

The Center appointed Gordon Harris as the sole panelist in this matter on February 24, 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

The Complainant is the owner of around 100 trade mark registrations and applications for various marks comprising the name “Sally”, for example “SALLY BEAUTY” and “SALLY BEAUTY SUPPLY”. The registrations and applications are worldwide in nature and include Hong Kong, where the Respondent is domiciled.

The “SALLY” marks originate in 1964, and the brand has now grown to the position whereby there are over 2,800 beauty supply stores around the world. The “SALLY” mark was registered in Hong Kong as a trade mark in March 1992. The Complainant has produced significant evidence of its sales in Asia over recent years, including sales of over US$12 million in the 2004 fiscal year.

5. Parties’ Contentions

A. Complainant

In the absence of response, the Complainant’s contentions can be treated, to some extent, as “non-contested facts” and accordingly, some of them are set out in section 4 above.

It is the principal contention of the Complainant that it has established a worldwide reputation for its “SALLY” marks and that it is inconceivable that the Respondent did not know of such marks when choosing to register the domain name in issue, <sallysbeautysupplies.com>. Complainant therefore contends that the Respondent registered the domain name with a view to gaining wrongful advantage.

The Complainant points to its plethora of trade mark registrations and its worldwide multi-million US dollar business as evidence of its fame, and further points to favourable references in important high-circulation magazines featuring beauty products.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that for the Complaint to succeed, the Complainant must establish that:

i) the Respondent’s Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and

ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

iii) the Respondent’s Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

In the absence of any contention to the contrary, the Panel accepts the facts stated by the Complainant in support of its allegation that it has a very well-known worldwide trade mark. Those facts as stated, and the supporting documentation, appear to bear that out.

It has become a fully established principle of this procedure that minor alterations to a well-known mark are not sufficient to set aside a finding of identicality or confusing similarity. Accordingly, the addition of a single “s” and the pluralizing of the name to “supplies” at the end of the domain name is in no way sufficient to discharge the quite clear evidence that the domain name in dispute is objectively identical or at least confusingly similar to the Complainant’s marks, and in particular, its mark “SALLY BEAUTY SUPPLY”.

Accordingly, the Panel finds that the Complainant has proved the first element required under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

It appears from the evidence before the Panel that the only “content” on the site in issue is an attempt to redirect traffic to other competing beauty supply web sites. The site in question makes specific reference to the Complainant’s mark, therefore indicating that the Respondent was fully aware of the mark, and it is contended that none of the links from the site lead to the Complainant’s own sites.

There is no evidence to support any suggestion that the Respondent has any right or legitimate interest in the name and, in the absence of any contentions from the Respondent, the Complainant’s allegations are made out.

C. Registered and Used in Bad Faith

An ownership report pertaining to the Respondent is attached to the Complaint which lists a number of extremely well-known trade marks which the Respondent has registered as domain names. The Complainant contends that this is a pattern of conduct which establishes bad faith and demonstrates that there was no intention to use the domain name in dispute legitimately.

The registration of a number of domain names pertaining to famous businesses or persons is not, in itself, clear evidence of bad faith. This Panel has previously contended strongly that bad faith is not expressed purely in terms of the absence of good faith. However, it is quite clear from the supporting material in this case that there is more than sufficient evidence to demonstrate that the Respondent is in bad faith in its approach to famous marks and the registration of identical or very similar domain names.

In all the circumstances the Panel is satisfied that there is sufficient evidence to find that the Respondent has registered and used the domain name complained of in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

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

Gordon Harris
Sole Panelist

Dated: March 8, 2005