WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Soft Sheen / Carson Inc. v. International Newcastle
Case No. DBIZ2002-00230
1. The Parties
The Complainant is Soft Sheen / Carson Inc., a corporation with a principal place of business at 1000 East 87th Street, Chicago Illinois 60619, USA. Complainant is represented in this proceeding by Sophie de Malherbe, LíOréal, 62 rue díAlsace, 92 583 Clichy Cedex, France.
The Respondent in this proceeding is International Newcastle, whose address is FOR SALE at DomainCollection.com, Miami, Florida 33186, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <carson.biz>.
The registrar for the disputed domain name is Iholdings.Com / Dotregistrar.Com, 13205 SW 137th Avenue, Suite # 133, Miami, Florida 33186, United States of America.
3. Procedural History
This Complaint will be considered and resolved pursuant to the guidelines set forth in the Start-up Trademark Opposition Policy for .BIZ ("STOP") adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on May 11, 2001, the Rules for Start-up Trademark Opposition Policy for .BIZ adopted by NeuLevel, Inc. (the "STOP Rules"), and the World Intellectual Property Organization Arbitration and Mediation Centerís (the "Center"), Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the "Supplemental STOP Rules").
The Complaint was filed on April 29, 2002, in hard copy, and on May 13, 2002, by e-mail.
On June 5, 2002, the Center sent a Request for Registrar Verification to the Registrar Iholdings.Com/Dotregistrar.Com ,and again on June 21, 2002. On June 26, 2002, the Registrar sent a Response to the Center, confirming the Registrar had registered the disputed domain name and that STOP was in effect.
The Center sent Complainant a STOP Complaint Deficiency Notice by e-mail on July 2, 2002, regarding the payment of fees and the identity and location of the Respondent. In response, Complainant filed an Amendment to the Complaint on July 5, 2002, which covered these issues.
On July 26, 2002, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. After not receiving a response, the Center sent Respondent a Notification of Respondent Default by e-mail on August 16, 2002.
The Administrative Panel submitted a Declaration of Impartiality and Independence on August 21, 2002, and the Center proceeded to appoint the Panel on that date. The Panel finds the Center has adhered to STOP, the STOP Rules and the Supplemental STOP Rules in administering this Case.
4. Factual Background
As an American company, Complainant currently sells hair and skincare products internationally under the mark, "Carson", for which it owns a registered United States trademark.
Respondent is listed as the Registrant of the disputed domain name. The record of registration was created on March 27, 2002.
5. The Partiesí Contentions (Summarized)
Complainant has used the "Carson" mark since 1972 in connection with the production and sale of a range of hair and skincare products in the United States of America. The mark is also currently used for the same purposes in about sixty other countries.
Complainant owns a registered United States trademark for "Carson".
Respondentís domain name is identical to the Complainant Trademark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondentís registration of the disputed domain name.
Respondent registered the <carson.biz> domain name in bad faith. Respondentís primary purpose in acquiring the disputed domain name was for resale for a price in excess of Respondentís out-of-pocket costs directly related to the domain name. This is evidenced by Respondent's own listed mailing address (For Sale at domaincollection.com), Respondent's e-mail address (<email@example.com>) and the listing for sale of the disputed domain name at that e-mail address.
Respondent did not submit a Response in this proceeding.
6. Discussion and Findings
The Center forwarded a copy of the Complaint to Respondent by hard copy and e-mail and sent Respondent a Notification of Respondent Default by e-mail. In view of these actions by the Center, the Panel is convinced that Respondent has been fairly notified of these proceedings and that Respondent's right to due process has not been violated.
In order for Complainant to prevail in this proceeding and gain transfer of the disputed domain name, <carson.biz>, Complainant must prove the following (STOP, paragraphs 4(a)(i-iii):
- the domain name is identical to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered or is being used in bad faith.
The Panel finds that Complainant owns a registration of the trademark "Carson" in the United States (U.S. Registration No. 988772, dated July 23, 1974, for the manufacture and sale of hair and skin care products) (Complaint Annex 3).
The record makes it evident to the Panel that Complainant's rights in this trademark arose significantly prior to Respondent's registration of the disputed domain name. The disputed domain name, <carson.biz>, contains Complainant's entire mark plus the addition of the gTLD ".biz". The inclusion of that gTLD is not significant as all proceedings under STOP involve a dispute over a domain name containing that gTLD.
The Panel finds that, in satisfaction of paragraph 4(a)(i) of STOP, Complainant has proved that the disputed domain name is identical to a trademark or service mark in which the Complainant has rights.
No Rights or Legitimate Interests
The Panel notes the difficulty faced by Complainant in proving that Respondent has no rights or legitimate interests in the disputed domain name, since to do so would be to prove a negative. Therefore, the Panel deems it appropriate to follow numerous prior panels operating under the Uniform Domain Name Dispute Resolution Policy (the "Policy") in requiring Complainant to establish lack of rights and legitimacy on only a prima facie basis before shifting the burden to Respondent to produce contrary evidence. See Prisma Presse v. Buydomains.com, WIPO Case No. D2001-1073 (October 22, 2001).
Since Complainant owns a valid trademark identical to the disputed domain name and has stated that Complainant has not authorized or licensed Respondent to use that name, Complainant has, in the view of the Panel, made a prima facie case.
Paragraph 4(c) of STOP offers Respondent three specific ways to establish its rights or legitimate interests in the disputed domain name. Having filed no Response, Respondent has not contended and the Panel finds no evidence that any of the circumstances listed in paragraph 4(c) exist in this case. Furthermore, there is nothing in the record to suggest any other basis upon which to conclude that Respondent has any rights or legitimate interests in the disputed domain name.
In accordance with the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(b)(i) of STOP, directs the Panel that a finding of bad faith registration or use of a domain name should obtain if the Panel determines that Respondent registered the name for the primary purpose of selling, renting or otherwise transferring it to Complainant or a competitor of Complainant for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name.
As evidence that Respondent has engaged in just such conduct, Complainant points the Panel to the Respondent's various addresses, which all suggest that Respondent is engaged in the habitual resale of domain names, and to the actual advertisement for sale of the disputed domain name on Respondent's web site (Complaint Annex 5). The Panel also notes that, as is true of most challenged ".biz" domain names, no web site is operative at the disputed domain name. At least one panel ruling pursuant to the Policy has stated that, where a web site is active, a mere showing that a domain name holder offers the domain name for sale is not necessarily evidence of bad faith registration (See The State Bar of California v. eWebnation.com, Inc., NAF Case No. FA97137 [June 14, 2001]). However, the absence of web site activity in this case leads the Panel to find persuasive the reasoning found in prior Policy cases, where panels have found bad faith based solely on the auctioning of a non-used domain name (See for example, Wrenchead.com, Inc. v. Hammersla, WIPO Case No. D2000-1222 [December 12, 2000]).
Therefore, the Panel finds that, per paragraph 4(b)(i) of STOP, the disputed domain name was registered in bad faith.
The Panel has found that the disputed domain name, <carson.biz>, is identical to Complainantís "Carson" trademark. The Panel also has found that Respondent has no rights or legitimate interests in the disputed domain name. Finally, the Panel has found that Respondent registered the disputed domain name in bad faith because Respondent's primary intent in registration was to transfer the disputed domain name to Complainant, or a competitor of Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.
Thus, pursuant to paragraphs 4(i) of STOP and 15 of the STOP Rules, the Panel orders that the disputed domain name, <carson.biz>, be transferred from Respondent, International Newcastle, to Complainant, Soft Sheen / Carson Inc.
Dennis A. Foster
Dated: September 5, 2002