WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HQUK Limited v. Head Quarters
Case No. D2003-0942
1. The Parties
The Complainant is HQUK Limited, Berkley Square, London, United Kingdom of Great Britain and Northern Ireland, represented by Berwin Leighton Paisner Solicitors of London, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Head Quarters, Cheltenham, Gloucestershire, United Kingdom of Great Britain and Northern Ireland, represented by the Waldrons Solicitors of Brierly Hill, West Midlands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <hq-hair.com> (the "Domain Name") is registered with Tucows Inc.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 26, 2003. On November 27, 2003, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On November 27, 2003, Tucows 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.
3.2 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").
3.3 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 November 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2003.
3.4 The Respondent did not submit a response by December 18, 2003. Accordingly, the Center notified the Respondentís default on December 22, 2003.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on December 31, 2003. 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.
3.6 On January 6, 2004, Waldrons, the Respondentís legal advisers, sent a letter to the Center. In that letter Waldrons explained that separate proceedings had been commenced under the Nominet Dispute Resolution Service in relation the domain name <hq-hair.co.uk>. A response in relation to the Complaint in those proceedings had been forwarded to Nominet UK, and a copy of that response (the "Nominet Response") was enclosed. However, due to "an oversight on [Waldrons] part", they had "failed to notice that there were separate dispute resolution proceedings instigated [under the UDRP]". Waldrons now wanted to review the Complaint and "formulate [its] response" and sought "leave to submit [its] clientís response late".
3.7 On January 8, 2004, and having reviewed the contents of the Respondentís Solicitors letter, the Panel made an order (Procedural Order No.1) the operative terms of which were as follows:
"(1) The Respondent shall by no later than 5:30 pm GMT on Friday January 16, 2004:
(i) submit any Response that it wishes the Panel to consider in this matter; and
(ii) submit a document setting out its detailed reasons why the Panel should grant an extension of time for submission of a Response and/or why the Panel should consider and take notice of that Response in coming to its decision in this matter.
(2) At the same time as submitting any document in accordance with paragraph (1)(i) of this Order, the Respondent shall forward a hard copy of the same complete with copies of any document annexed thereto direct to the Sole Panelist. Save for the purposes of compliance with this paragraph of this Order, paragraph 8 of the UDRP Rules shall continue to apply.
(3) The Complainant may, if so advised, submit by no later than 5:30 pm GMT on Friday January 23, 2004, a statement limited to the matters set out in any document submitted by the Respondent in accordance with paragraph (1)(ii) of this Order.
(4) The Panel will address in its decision the question of whether it should grant an extension of time for submission of a Response and/or it can and should consider and take notice of any Response submitted by the Respondent.
(5) The Panel hereby postpones issuing a decision in this proceeding until Friday February 6, 2004."
3.8 The Procedural Order also provided as follows:
"The Panel brings paragraph 5(b)(ix) of the UDRP Rules to the attention of the Respondent. Insofar as the Respondent makes in any Response any assertion of fact in respect of which it can be reasonably expected that documentary evidence exists, and no documentary evidence is annexed to the Response in support of that fact, the Panel may draw an adverse inference therefrom."
3.9 No Response was filed by the Respondent by January 16, 2004, in accordance with the Procedural Order No.1. Instead, Waldrons unilaterally sent a letter direct to the Panel dated January 21, 2004. In that letter the Respondentís Solicitors thanked the Panel "for the extension of time the [Panel] granted to [their] client for submission of any response", but stated that due to "escalating costs" they would not be making any further submissions. They therefore asked that the Panel "take into account, insofar as it able to do so in connection with these proceedings, the response that [their client] made to the domain name <hq-hair.co.uk>".
3.10 On January 27, 2004, solicitors for the Complainant sent a fax to the Center objecting to the Panel taking into account the contents of the Nominet Response. However, the Complainantís solicitors also went to argue that insofar as the Panel decided that it could take into account the Nominet Response then "in the interests of fairness" the Panel should take into account the Complainantís Reply in those proceedings (a copy of which was enclosed). Further, the Complainant sought to draw to the attention of the Panel that a trade mark application relied upon by the Complainant had "now proceeded to the registration stage".
4. Factual Background
4.1 The Complainant is a private limited company incorporated in the United Kingdom on June 5, 1997.
4.2 Whilst the Complainant has only been in existence for 6 Ĺ years, the Complainantís business was founded in the 1960ís and has operated under the name HQ "for many years" including since 1991, through an HQ Hair salon in London.
4.3 The Complainant registered the domain name <hqhair.co.uk> on January 19, 1999, and the domain name <hqhair.com > on October 21, 1999.
4.4 The Complainant launched its Internet brand HQhair in February 1999. "www.hqhair.com" has become a market leading website for hair and beauty products with a substantial turnover and is highly regarded within the hair and beauty industry.
4.5 The Complainant has taken an exclusive licence of the rights in relation to the trademark applications made by its "sister company HQHairdressing Limited" for the following community trade marks (the "Trade Mark Applications"):
- "HQHAIR" in classes 26 and 35, No. 2,046,977- application date
January 19, 2001;
- "HQBEAUTY" in class 35, No. 2,782,761- application date July 17, 2002 ;
- "HQ" in classes 35 and 44, No. 2,901,114 - application date October 17, 2002.
4.6 The Respondent registered the Domain Name on April 22, 2002.
5. Procedural Arguments
5.1 It is convenient before setting out the various submissions of the parties, to deal with the question of whether the Panel should take into account the Nominet Response and the contents of the Complainantís letter of January 27, 2004.
5.2 In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780 and 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033 panels have held that late responses should be disregarded "absent good cause".
5.3 Paragraph 10(c) of the Rules states as follows:
"The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel."
5.4 At first sight the requirement under 10(c) of an exceptional case might appear stricter than the requirement to show good cause, but the Panel doubts that this is so. To ask a Panel to consider a Response that has been served late is essentially tantamount to a retrospective request for an extension of time. Also there seems little point in applying one test for whether an extension of time should be granted but where that request has been denied and a Response served late going on to apply a different test as to whether the Response shall be accepted.
5.5 Further, the comments of the majority of the panelists in 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033 would seem to suggest that panels are now likely to take a stricter view on whether a party has shown good cause than might have been the case when the UDRP process was still relatively new.
5.6 How then is the test (whether it be an exceptional case or showing good cause) to be applied in this case? The reasons given by the Respondent as to why it failed to serve a Response by December 18, 2003, are, to say the least, unusual. The Panel is unaware of any case where the failure was due to legal advisers to the Respondent confusing separate proceedings in relation to separate domain names under the Policy and the Nominet Dispute Resolution Service. This was a gross and basic error for which the Respondentís solicitors accepted responsibility. It, therefore, looked as if the Panel might have to answer the question whether the Respondent should be forced to suffer the consequences of the mistakes of his legal advisers.
5.7 In the event, for reasons that the Panel now set out, a decision on this issue is not necessary. By means of Procedural Order No.1 the Panel ordered that the Respondent should put in any response upon which it wished to rely by January 16, 2004. It did not do so. Instead it sent a letter on January 21, 2004, in the terms described earlier in this decision. The Panel is not prepared to accept the letter of January 21, 2004, with its reference back to the Nominet Response enclosed with its letter of January 6, 2004, as a Response for the purposes of these UDRP proceedings. The reasons for this are as follows:
(a) The letter was procedurally defective as a Response in that it did not comply with the requirements of paragraph 5 of the Rules. Further it constituted a unilateral communication with the Panelist contrary to paragraph 8 of the Rules.
(b) The arguments put forward to justify reliance upon the Nominet Response are unpersuasive. The Respondent claimed that the arguments in Nominet Proceedings and UDRP proceedings are essentially identical. They are not. By way of example, Nominet requires a Claimant to show either abusive registration or use, whereas the Policy requires registration and use in bad faith. Perhaps it could be said that the Panel could work its way through the Nominet Response and take into account those assertions of fact or arguments that may be relevant to the UDRP proceedings. However, this asks far too much of the Panel. Essentially, it involves a Respondent asking the Panel to examine material much of which is not relevant to the issues before it and then to construct for the Respondent what the Respondentís case may be from that material. The Panel is not prepared to do that in this case. The Respondent may be anxious to avoid costs, but this does not justify requesting the Panel to act as its unpaid legal advisor.
(c) Even if the letter and the Nominet Response referred to in that letter could be treated as a response for the purposes of the Policy, no explanation is given as to why the letter setting out the Respondentís position was not served by January 16, 2004, as required by Procedural Order No. 1. Even if the Respondentís solicitorís initial error constituted good cause or an exceptional case to justify service of a late Response as at January 6, 2004, (the date of Waldrons' initial letter) no good cause or exceptional case was put forward to justify the failure to do so by January 16, 2004. To say in this respect that the Panel was in possession of the Nominet Response prior to January 16, 2004, is no answer here. The Respondent did not ask the Panel to treat this document as the Response under the Policy until January 21, 2004. It was merely provided as evidence in connection with Waldronsí earlier error and, indeed, on its face did not even relate to the Domain Name.
5.8 It may be that the Respondent considers this to be harsh. The Respondent was not responsible for Waldronsí initial mistake nor (the Panel assumes) for Waldronsí false assumption that the arguments in Nominet proceedings and UDRP proceedings are "essentially identical". However, if the Respondent believes that the timely filing of a properly formulated Response in this matter would have made any difference to the outcome of this case, this is a matter for the Respondent to take up directly with its solicitors.
5.9 The Panel should perhaps add for the sake of completeness that even if it had decided to take into account the Nominet Response, it would have not have been minded to take into account the reply of the Complaint also served in the Nominet proceedings. Whilst the assertion by the Complainant that it should do so "in the interests of fairness" may seem superficially attractive, it is in the Panelís view misconceived. These are not Nominet proceedings and consideration by the Panel of the Nominet Response would have not made them so. Therefore, in essence the Complainantís request constituted a request under the Policy to be allowed to file a supplemental submission. The Panel would not have been minded to grant that request. In coming to any conclusion on this issue the Panel takes into account the following comments of the panel in the Digital Kitchen decision:
"As is by now well-established, the Rules do not provide any right of reply. Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938 (November 3, 2000). Although supplemental submissions may be accepted to address new legal developments, see, e.g., Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105 (April 13, 2000), or to rebut unexpected factual assertions, see, e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237 (June 11, 2001), they should be allowed sparingly."
5.10 Somewhat different is the Complainant solicitorsí late request that the Panel take notice of the fact that its clientís CTM application 002046977 (i.e. HQhair) had "proceeded to the registration stage". However, for reason that are explained later in this decision, the Panel feels no need to take this fact into account in coming to its decision. In the circumstances, the Panel takes no account of this fact.
6. Partiesí Contentions
6.1 The Complainant contends as follows:
Identical or Confusingly Similar to a trade mark in which it has rights
6.2 The Complainant relies upon its exclusive licence in the Trade Mark Applications and its "rights in the HQ Brand". The Domain Name is confusingly similar to the Trade Mark Applications, the addition of the hyphen between "hq" and "hair" being not sufficient to prevent that confusing similarity.
6.3 The logo of the Respondent, shown at the top right hand corner of the Respondentís home page is also confusingly similar to "the Complainantís marks".
No rights or Legitimate interests / Registered and Used in Bad Faith
6.4 The Respondent registered the Domain Name after the Trade Mark Applications were published and the Complainant had established extensive goodwill in the "HQhair name". Therefore, the Respondent has no right or legitimate interest in respect of the Domain Name.
6.5 The distinctive nature of the "hqhair mark", in particular press coverage at the time the Domain Name was registered, means that the Respondent must have known of the Trade Marks and the Complainantís business at the time of registration of the Domain Name. This evidences bad faith.
6.6 Further, the registration of the Domain Name and using it to point to a website offering similar services to the Complainant, had the purpose of disrupting the business of the Complainant by creating a likelihood of confusion with the Complainantís business, constituting bad faith.
6.7 Internet users will believe that the Complainant endorses or is in some way connected with the Respondent. Although the Respondent is using the Domain Name in respect of offering goods and services, it is not making a legitimate non-commercial or fair use of the site. The Respondent has chosen the Domain Name to capture the Complainantís Internet audience.
6.8 In connection with these assertions the Complainant relies upon the decisions in NIKE, Inc. v. Khoo Lye, NAF Case No. FA0110000100180, Gorstew Limited and Unique Vacations, Inc. v. All-Inclusive Vacations, NAF Case No. FA0005000094929 and Travel Services, Inc. v. tour Coop of Puerto Rico, NAF Case No. FA0001000092524
6.9 The Complainant requests that the Administrative Panel issue a decision that the Domain Name be transferred to the Complainant.
6.10 The Respondent has made no formal substantive reply to the Complainantís contentions.
7. Discussion and Findings
7.1 The Panel has reviewed the Complaint together with its annexures. In light of this material, the Panel finds as set out below.
7.2 The Panel does not find that there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the Complaint. Details of these proceedings have been served in accordance with the relevant requirements set out in the Rules.
7.3 It is incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. However, under paragraph 5(e) of the Rules if the Respondent does not submit a response and in the absence of exceptional circumstances, "the panel shall decide the dispute based upon the Complaint". Further, under paragraph 14 of the Rules where a party does not comply with any provision of the Rules, the panel "shall draw such inferences therefrom as it considers appropriate".
A. Identical or Confusingly Similar
7.4 Under paragraph 4(a)(i) of the Policy, the Complainant must show that the Domain Name is identical or confusingly similar to a trade mark in which it has rights.
7.5 The Complainant relies upon its exclusive licence of three applications for the registration of the Community trade marks ("CTM"s) "Hqhair", "HQbeauty" and "HQ". Contrary to the Complainantís assertion in the Complaint that the Domain Name was registered after the Trade Mark Applications were published, it is clear that the last two of these applications were made after the registration of the Domain Name.
7.6 This raises no less than three separate questions, none of which have a straight forward answer, i.e.:
(i) Is an exclusive licence of a CTM sufficient rights in a trade mark for the purposes of paragraph 4(a)(i)?
(ii) Is a CTM application a trade mark for the purposes of paragraph 4(a)(i)?
(iii) Does it make any difference to the answer to question (ii) if the trade mark was applied for after the date of registration of the Domain Name?
7.7 The question of whether a licence of a trade mark provides sufficient rights in a trade mark for the purposes of paragraph 4(a)(i) is one that has been considered in a number of UDRP decisions. These include L'usine Nouvelle v. Halami Philippe Tropic Telecom WIPO Case, No. D2000-0983, Lycos Europe N.V. v. RegionCo, WIPO Case No. D2000-1102, NBA Properties, Inc. v. Adirondack Software Corporation, WIPO Case No. D2000-1211, Limco, Inc. and Too, Inc. v. Pat Mintash d/b/a Mintash Enterprises, WIPO Case No. D2001-0175, and HBP, Inc. v. Front and Center Tickets, Inc., WIPO Case No. D2002-0802. It is difficult to fully reconcile these decisions, but it is noticeable that where the complainant has shown that it is an exclusive licensee of the relevant trade marks this has tended to be sufficient.
7.8 Looking at this matter from first principles it is noticeable that the Policy does not state that the Complainant must be the registered owner of the trade mark. Rights in the trade mark is sufficient. But what level of rights short of registered ownership is necessary? What is a trade mark for the purposes of the Policy may vary from jurisdiction to jurisdiction (see the comments in relation to this issue by the Panel in Sibyl Avery Jackson v. Jan Teluck, WIPO Case No. D2002-1180 in the context of unregistered trade marks). It therefore seems to the Panel that what is sufficient rights in a trade mark may similarly vary dependent upon the type and nature of the trade mark relied upon.
7.9 Here the relevant marks are CTMs. Article 22(3) of the Community Trade Marks Regulation (40/94/EEC) provides as follows:
"Without prejudice to the provisions of the licensing contract, the licensee may bring proceedings for infringement of a community trade mark only if its proprietor consents thereto. However, the holder of an exclusive licence may bring such proceedings if the proprietor of the trade mark, after formal notice, does not bring infringement proceedings within an appropriate period"
7.10 Does the grant of a licence either alone or in conjunction with the rights afforded by Article 22 grant the licensee sufficient rights for the Policy? If the rights under Article 22 are significant here, must the licensee also show that it has been granted the right to pursue infringement claims (or perhaps by analogy UDRP proceedings) or alternatively that it is an exclusive licensee who has given "formal notice" to the trade mark owner and that an "appropriate period" has now passed? It seems not unreasonable to assume that in this case, given the close connection between the trade mark application owners and the Complainant (they are described as "sister companies"), the entity that made the Community Trade Mark Applications has consented to these UDRP proceedings. However, it is no more than an assumption given that no claim to this effect has been made by the Complainant.
7.11 As to the question whether a trade mark application is sufficient to constitute a trade mark for the purposes of the Policy, yet again there is uncertainty. In Netdoktor A/S v. Jens Nielsen, WIPO Case No. DBIZ2002-00109 the panel decided that the pending United Kingdom trade mark application for NETDOCTOR.CO.UK was to be disregarded, on the grounds that a trade mark application did not give the applicant any trade mark rights before a trade mark registration is granted. In contrast, in La francaise des Jeux v. L Welsr, WIPO Case No. D2002-0305, the Complainant sought to rely on two CTM applications and the Panel held that the applications for CTMs revealed no obvious grounds for denying the registrations and as such the trade mark applications were considered sufficient for the purposes of the Policy.
7.12 Again, looking at this question from first principles, in the United Kingdom, where a trade mark is registered it is deemed to have been registered from the date of the filing of the application (see Ss 9(3) and 40(3) of the Trade Marks Act 1994). Therefore, an applicant for a UK trade mark has rights in that trade mark from the date of application; albeit rights that are conditional upon a future event that has retrospective effect. Are these sufficient rights for the Policy? Similarly, in the case of CTMs, Article 9(3) of the Community Trade Marks Regulation grants certain rights of compensation from the date of publication of the CTM if that mark should subsequently be granted.
7.13 However, if these are sufficient trade mark rights for the purposes of the Policy, how is a panel to decide complaints the validity of which depend upon whether or not a registration will subsequently occur? So far as trade mark litigation in the United Kingdom is concerned, the problem is avoided by section 9(3) of the Trade Marks Act 1994, which expressly provides that no proceedings can be commenced until the date of registration. Similarly, the Community Trade Mark Regulation provides that no court may decide upon the merits of a claim for compensation until the registration is published (Article 9(3)). However, no equivalent provisions exist in the Policy.
7.14 The approach of the panel to this problem in La francaise des Jeux appears to have been that in the absence of any argument or obvious reason why that the applications would not proceed to grant, then it could be assumed that they would. However, the Panel finds this approach problematic. Even if a respondent need only show an arguable case that the application will fail, a panel will still risk being drawn into an argument as to the merits of the application that it is likely to be ill-placed to deal with.
7.15 Indeed the difficulties and dangers of asking a panel to make a decision in such a case were illustrated for the Panel when it conducted a cursory online trade mark registry search in respect of the Trade Mark Applications shortly prior to issuing this decision. The results of this search suggested that two of the Trade Mark Applications either had been or were still subject to opposition proceedings, a fact that had not been alluded to or mentioned in the Complainantís Complaint.
7.16 The last question that arises here is that, if an application for a trade mark is deemed reliable for the purposes of establishing rights in a trade mark under the Policy, then can an application for a trade mark after the date of the registration of the domain name also be relied upon? Essentially the question here becomes no different from that which arises when a complainant relies upon a registered trade mark that was applied for after the registration of the relevant domain name. As is discussed in Joe Cole v. Dave Skipper, WIPO Case No. D2003-0843, there are a number of cases that suggest that since there is no time restraint in paragraph 4(a)(i) of the Policy and therefore the fact that the trade mark post dates the registration does not matter (although it may be highly relevant to the separate question of bad faith). However, this is not the only possible approach.
7.17 Therefore, the Complaint potentially raises a large number of difficult questions on the scope of trade mark rights under the Policy. However, it is not necessary to consider these questions further in this case. Neither is it necessary for the Panel to consider whether it should take into account the Complainantís late submission that CTM application 00204677 has now proceeded to registration. The reason for this is that it is reasonably clear that the Complainant does not just rely on the Trade Mark Applications but also on its common law rights in the "HQhair brand" arising out of its established extensive goodwill in the HQhair name.
7.18 The phraseology used by the Complainant in its Complaint is somewhat erratic and inconsistent. On the question of confusing similarity, for example, it refers only to the "Complainantís trade marks in annex 2". This is a reference only to the Trade Mark Applications and not to any common law rights in the name HQhair. Nevertheless it is clear from statements elsewhere in the Complaint, that the rights it relies upon are broader than just rights in the Trade Mark Applications. In particular the Complaint makes clear that the "Complainant has rights in the Hqhair brand".
7.19 It is now clear under the Policy that "common law rights" suffice for the purposes of establishing the relevant trademark rights of the Complainant pursuant to paragraph 4(a)(i) of the Policy. The Panel refers in this respect to the decision in Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 and the decision of this Panel in Sibyl Avery Jackson v. Jan Teluck, WIPO Case No. D2002-1180.
7.20 Has the Complainant in this case brought sufficient evidence before the Panel to establish such rights as at the date of registration of the Domain Name? The Complainant contends that:
(a) the Complainantís business had been in existence since the 1960s and has operated an HQ Hair Salon in London since 1991;
(b) it launched its Internet brand HQhair from the site "www.hqhair.com" in February 1999, and that this site receives "several millions of hits per month" (although exactly when the website started to achieve interest of this magnitude is not made clear); and
(c) it has achieved widespread coverage for its HQhair brand and is regularly featured in articles in both regional and national press.
7.21 None of these assertions are contested by the Respondent. So far as press coverage is concerned, the Complainant has also submitted evidence in this respect that includes 24 articles from national newspapers and magazines dated between December 2001 and April 2002 (including The Daily Express, The Mirror, The Daily Mail, Hello, Cosmopolitan Hair and Beauty, Company), all of which feature HQhair or hqhair.com.
7.22 This evidence is sufficient in the Panelís opinion to show that the Complainant had sufficient goodwill in the HQhair brand at the time that the Domain Name was registered on April 22, 2002, to satisfy the requirement of rights in a trade mark under the Policy.
7.23 The Panel also finds that the Domain Name is either confusingly similar or identical to the HQhair name. The existence of the ".com" suffix, the existence of the hyphen between the letters hq and the word hair and the use of lower case characters in the Domain Name do not in this case serve to alter this finding.
7.24 Accordingly, the Panel concludes that the Complainant has proved the relevant elements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
7.25 Under paragraph 4(a)(ii) of the Policy, the Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name.
7.26 The only direct reference to lack of legitimate interests in the Complaint is as follows:
"The Respondent should be considered as having no legitimate interest in respect of the Domain Name because it was registered after the Complainantís trade mark applications were published and the Complainant had established goodwill in the HQhair name."
7.27 This is not good enough. Firstly, as has already been explained earlier in this decision, the statement appears at least in respect of two of the trade mark applications to be factually false. Secondly, and more importantly, it is little more than an assertion of the existence of rights for the purpose of paragraph 4(a)(i) of the Policy.
7.28 Nevertheless, this statement is then followed by a reference to the Nike, Inc. v. Khoo Lye decision (NAF Case No. FA01110000100180) from which it is apparent what really is the Complainantís case on this issue. In the part of the Nike decision that deals with the question of the lack of legitimate rights and interests is to be found the following passage:
"Any use by Respondent of the <niketown.net> domain name, identical to Complainant's famous mark, would be an opportunistic attempt to attract customers via Complainant's famous mark. See Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 (December 21, 2000) (finding no rights or legitimate interests where one "would be hard pressed to find a person who may show a right or legitimate interest" in a domain name containing Complainant's distinct and famous NIKE trademark)."
7.29 The Complainant has not asserted that "HQhair" is a famous mark, but certainly does appear to be asserting that the Respondent knew of the brand prior to registering the Domain Name and that this was an opportunistic attempt to attract customers via the Complainantís mark. For the reasons given later on in the context of the question of bad faith, the Panel accepts that this is correct. To deal with a domain name in this manner certainly does not provide a respondent with legitimate rights and interests in that domain name. In the absence of any admissible assertion of the Respondent that it had legitimate rights or interests here for some other reason, the Panel holds that paragraph 4(a)(ii) of the Policy is made out by the Complainant.
C. Registered and Used in Bad Faith
7.30 Paragraph 4(a)(iii) of the Policy requires that the Domain Name was registered by the Respondent, and has been used, in bad faith.
7.31 A non-exclusive list of circumstances constituting evidence of bad faith for the purposes of paragraph 4(a)(iii) are set out in paragraph 4(b) of the Policy. They are as follows:
"(i) circumstances indicating that you have registered or you have acquired the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly to the Domain Name; or
(ii) you have registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
7.32 Although the relevant paragraphs in the Policy are not referred to in the Complaint, it is clear that the Complainant is alleging bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.
7.33 Turing first to paragraph 4(b)(iii), the Complainant contends that by registering the Domain Name and by pointing customers to a website offering similar services to the Complainant, the Respondent is disrupting the Complainantís business by creating a likelihood of confusion with the Complainantís business. The Panel accepts that this may be so. The Panel is also prepared to accept given the fact that both parties sell hair products that the Respondent is a competitor of the Complainant. However, the Panel has doubts that the Respondent registered the Domain Name primarily for the purpose of disrupting the Complainantís business.
7.34 This leaves the allegation under paragraph 4(b)(iv) of the Policy. The Complainant asserts that the Domain Name will mislead Internet users to believe that the Respondentís website is affiliated with the Complainantís HQhair brand and that "the Respondent has chosen the Domain Name to capture the Complainantís Internet audience". It is inherent in this assertion that the Complainant is alleging that the Respondent had knowledge of the Complainantís goodwill in the HQhair name when registering the Domain Name.
7.35 Given that the parties are based in the same country and operate in the same fields, the relatively unusual nature of the name in question and the degree of publicity that the Complainant achieved prior to the registration of the Domain Name, the Panel finds that the Complainant has put forward a prima facie and credible case to the effect that this the Respondent did have this knowledge and that this was indeed the Respondentís intention. The Respondent has but forward no admissible evidence to the contrary. In the circumstances, the Panel finds that the circumstances set out in paragraph 4(b)(iv) of the Policy have been shown by the Complainant.
7.36 In the circumstances, the Panel holds that the requirement of registration and use of the Domain Name in bad faith set out in paragraph 4(a)(iii) of the Policy is made out by the Complainant.
8.1 For all the foregoing reasons, the Panel finds that the Complainant has sufficiently proved that:
(i) the Domain Name is confusingly similar to a trade mark in which the Complainant has rights;
(ii) the Respondent does not have any rights to or legitimate interest in the Domain Name; and
(iii) the Domain Name was registered and has been used in bad faith.
8.2 Therefore, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <hq-hair.com> be transferred to the Complainant.
Matthew S. Harris
Dated: February 5th, 2004