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Cantera Doors & More, Inc. v. Hubbard Iron Doors [2005] GENDND 325 (13 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sally Holdings, Inc. v. W. Williams

Case No. D2005-1103

1. The Parties

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

Respondent is W. Williams, Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain names <sallybeautysupply.net> and <thesallybeautysupply.com> (the “Disputed Domain Names”) are registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2005. On October 21, 2005, the Center transmitted by e-mail to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On October 21, 2005, Wild West Domains, Inc. 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 and technical contact. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on November 8, 2005 In accordance with the Rules, paragraph 5(a), the due date for the Response was set for November 28, 2005. Respondent did not submit a response. Accordingly, the Center notified the Respondent of Respondent’s default on November 30, 2005.

The Center appointed the undersigned as the sole panelist in this matter on December 7, 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 a well known beauty supply retail store chain and distributor and also offers a series of educational classes, publications, shows, videos and training programs for salon professionals. Complainant owns almost 100 worldwide trademark registrations and applications for the marks SALLY, SALLY BEAUTY, SALLY BEAUTY SUPPLY and other marks, including numerous United States federal registrations for trademarks consisting of or containing the words SALLY or BEAUTY or SALLY BEAUTY (Complainant submitted documents evidencing at least 10 applications or registrations). Complainant avers that Complainant, or a predecessor-in-interest, has been using one or more trademarks consisting of or containing the word SALLY in connection with retail store services, beauty supply products and related goods and services since 1964. Complainant avers that, by 1982, there were 119 retail stores under the SALLY or SALLY BEAUTY SUPPLY brand. Complainant further avers that in fiscal year 2003, sales by Complainant under the SALLY mark were in excess of US$1.8 billion.

Complainant has asserted that its numerous SALLY trademarks are famous and are recognized by a wide spectrum of members of the public – “from brides to high school prom-goers.” To support this contention, Complainant has submitted evidence that a number of magazines have favorably referenced SALLY BEAUTY and its goods and services.

The Disputed Domain Names were first registered with Wild West Domains, Inc. on February 13, 2004 (<sallybeautysupply.net>) and November 27, 2004 (<thesallybeautysupply.com>).

Complainant has produced documentation (the “Domain Trafficking Evidence”) evidencing that Respondent has registered, or otherwise secured rights in, a large number of other domain names. Among the other domain names owned by Respondent are the following: <nannycam.us>; <autocam.net>; <morongocasino.com>; and <norahvincent.com>.

5. Parties’ Contentions

A. Complainant

Complainant contends that its SALLY BEAUTY SUPPLY trademark is famous and that the Disputed Domain Names are virtually identical to its famous trademark. Complainant asserts that the Domain Trafficking Evidence supports the conclusion that Respondent has no rights or legitimate interests in the Disputed Domain Names and is a cybersquatter who procures famous domain names with the intent of selling them to third parties or engaging in other prohibited activities. Complainant asserts that Respondent registered and is using the Disputed Domain Names in bad faith intending to either: (1) profit from the sale of the Disputed Domain Names by selling them to Complainant; (2) profit from the sale of the Disputed Domain Names by selling them to a competitor of Complainant so that the competitor could divert sales; (3) develop website(s) using Complainant’s trademarks; and/or (4) prevent Complainant from registering the Disputed Domain Names for its own use in its business. Finally, Complainant contends that Respondent has no legitimate rights in and to the Disputed Domain Names. For these reasons, Complainant requests that the Disputed Domain Names be transferred to Complainant.

B. Respondent

Respondent did not respond to Complainant’s contentions.

6. Discussion and Findings

The Panel’s jurisdiction is limited to a determination whether Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy, paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.

To obtain the relief, paragraph 4(a) of the Policy requires Complainant to prove each of the following:

(1) that the domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) that Respondent has no rights or legitimate interests in the domain names registered by Respondent; and

(3) that the domain names registered by Respondent have been registered and used in bad faith.

In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding on the basis of Complainant’s undisputed averments, pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and draw such inferences as it considers appropriate, pursuant to paragraph 14(b) of the Rules.

A. Identical or Confusingly Similar

Respondent does not dispute, and the Panel finds, that the Disputed Domain Names registered by Respondent are identical or confusingly similar to Complainant’s federally-registered SALLY BEAUTY SUPPLY trademark, Reg. No. 2,799,286.¹ It is well-settled that eliminating spaces within a trademark and adding a top level domain suffix such as “.com” or “.net” do not distinguish a domain name from being confusingly similar to a trademark. Baumberger v. SAND Webnames - For Sale, WIPO Case No. D2001-0502 (June 7, 2001). Further, regarding the use of the modifier “the” in the <thesallybeautysupply.com> domain name, previous UDRP panels have accepted basic hornbook law that the “user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.’” Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446 (June 8, 2001 ) (citing J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4^th ed. 1998).

Therefore, the Panel concludes that the Disputed Domain Names are confusingly similar to the SALLY BEAUTY SUPPLY trademark, a federally-registered trademark in which Complainant has rights.

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared 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) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy, paragraph 4(c).

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names. Respondent was not licensed by Complainant to use the mark SALLY BEAUTY SUPPLY. Complainant has submitted persuasive evidence supporting its contention that neither of the Disputed Domain Names bears any relationship to the business of Respondent and Respondent has not presented any arguments in rebuttal. Nothing in the record suggests that Respondent has at any time used either of the Disputed Domain Names in connection with a bona fide offering of goods or services or that Respondent is commonly known by either of the Disputed Domain Names. Respondent has not presented any arguments or evidence that he is making a legitimate noncommercial or fair use of either of the Disputed Domain Names, and it does not appear that he could make such a showing.

For these reasons, the Panel infers that Respondent has no such rights or a legitimate interest in either of the Disputed Domain Names. Cf. Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (December 4, 2000 ) (Panel free to infer no rights or legitimate interest where Respondent fails to rebut prima facie showing).

C. Registered and Used in Bad Faith

Finally, Complainant argues that Respondent has registered and used the Disputed Domain Names in bad faith. Specifically, Complainant essentially argues that Respondent’s bad faith is reflected in the fact that, with actual or constructive knowledge of Complainant’s rights in its famous trademark, Respondent registered and used the Disputed Domain Names intending to either: (1) profit from the sale of the Disputed Domain Names by selling them to Complainant; (2) profit from the sale of the Disputed Domain Names by selling them to a competitor of Complainant so that the competitor could divert sales; (3) develop website(s) using Complainant’s trademarks; and/or (4) prevent Complainant from registering the Disputed Domain Names for its own use in its business.

Complainant does not contend, and has not provided any evidence, that Respondent actually attempted to sell the Disputed Domain Names to Complainant or to a competitor. Complainant has also not submitted evidence corroborating that the business names on the web pages associated with the Disputed Domain Names are, in fact, Complainant’s competitors. The documents submitted by Complainant do, however, establish that the Disputed Domain Names were once associated with web pages that listed related, generic categories such as “hair piece,” “beauty,” “wig,” and “supply.” Although, these web pages also contained links to non-related categories such as “airline tickets,” the Panel is still persuaded that the bad faith criterion is met in this case.

Complainant has provided persuasive evidence that Respondent regularly traffics in domain names, which Respondent has not rebutted. Complainant’s evidence demonstrates that Respondent has registered, among others, the domain names <autocam.net> (a federally-registered trademark) and <norahvincent.com> (the name of a well-known columnist). The Panel is persuaded that this pattern of conduct establishes that Respondent registered the Disputed Domain Names without a bona fide intention to use them legitimately. See, e.g., Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275 (March 25, 2000); Aço Minas Gerais S.A. Açominas v. José Dutra, WIPO Case No. D2000-1458 (March 5, 2001); Avnet, Inc. v. Aviation Network, Inc., WIPO Case No. D2000-0046 (March 24, 2000). In fact, in view of Complainant’s trademark rights, it does not appear that Respondent could use the Disputed Domain Names to provide goods and services in commerce without Complainant’s (or one of its affiliate’s) consent. Therefore, in view of Respondent’s failure to submit a Response, the Panel is free to infer that Respondent must have registered the Disputed Domain Names for an illegitimate purpose, including, but not limited to, one of the illegitimate purposes posited above by Complainant.

Further supporting a finding of bad faith is the implausibility that Respondent did not have actual notice of Complainant’s rights before registering the Disputed Domain Names. Complainant has submitted persuasive evidence supporting the subject marks’ strength in the beauty supplies and equipment retail store services field. Moreover, this Panel cannot conceive of one legitimate reason for Respondent’s choice of a domain name that incorporates a well-known trademark regularly used to provide bona fide services to customers. In view of Respondent’s failure to submit a Response, he has not offered any reason. Other panels have found bad faith in similar situations. See eBay, Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259 (April 11, 2001) (“[I]t is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate.”); Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (the fact that the complainant was “widely known” by its trademarked name contributed to the panel’s conclusion that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.”).

In short, the Panel concludes that the bad faith element of the Policy is satisfied.

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 <sallybeautysupply.net> and the domain name <thesallybeautysupply.com> be transferred to Complainant.

Steven Auvil
Sole Panelist

Date: December 23, 2005

¹ Complainant asserts that it is the beneficial owner of trademark registrations owned by Sally Beauty International Inc. and Beauty Holding Company, Inc.