WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alberto-Culver Company v. North West Enterprise, Inc
Case No. D2006-0495
1. The Parties
The Complainant is Alberto-Culver Company, Melrose Park, Illinois, United States of America, represented by Roberts, Mlotkowski & Hobbes, P.C., United States of America.
The Respondent is North West Enterprise, Inc, Santa Fe Springs, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <nexxuscom.com>, <wwwnexxuscom.com> and <wwwnexxus.net> are 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 April 19, 2006. On April 19, 2006, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain names at issue. On April 21, 2006, OnlineNic, Inc. d/b/a China-Channel.com 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 April 26, 2006. 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 April 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2006.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on June 2, 2006. 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 the owner of at least 220 trademark registrations and applications for the mark NEXXUS (or NEXUS), or marks which include the NEXXUS (or NEXUS) mark, around the world. In addition, Complainant owns the domain name <nexxus.com>.
The NEXXUS mark was first registered in the United States of America in 1985, and remains in full force and effect. Complainant, through its predecessor-in-interest, created and adopted the NEXXUS marks as unique identifiers for its salon quality hair care products and related goods and services. The products are distributed in salons and major retailers around the world. Complainant has spent considerable amounts of money, time and effort in securing, developing, promoting, advertising, and protecting its world famous NEXXUS marks, and the public associates the NEXXUS marks with Complainant’s goods and services.
Respondent registered the domain names in dispute on March 28, 2006.
5. Parties’ Contentions
Complainant alleges that the domain names in dispute are virtually identical to Complainant’s famous NEXXUS mark, and to Complainant’s domain name <nexxus.com>, and that Respondent is “typosquatting” (omitting a period from Complainant’s domain name), such that the domain names in dispute are confusingly similar to the marks in which Complainant has rights.
Complainant alleges that Respondent has registered the domain names in dispute to profit from selling them to Complainant or its competitors, or to divert customers away from Complainant, cause confusion in the marketplace, or trade on Complainant’s goodwill, or to prevent Complainant from registering these domain names for its own business use.
Respondent allegedly has no legitimate rights in and to the NEXXUS mark, nor to use the famous mark in any manner.
Complainant contends that Respondent registered the domain names in dispute with knowledge of Complainant’s marks, and therefore registered in bad faith. Additionally, Respondent allegedly uses the domain names in dispute in bad faith, since it deprives Complainant of the use of these domain names.
Respondent allegedly is in the business of domain name trafficking, and has a pattern of conduct of registering domain names in bad faith, for the purpose of selling them or holding them hostage. Respondent allegedly owns more than 35,000 domain names, including many that appear to be typographical errors of other famous marks.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to Policy, paragraphs 4(a)(i)-(iii), for Complainant to prevail and have the disputed domain name(s) transferred to it, Complainant must show that:
(i) the disputed domain name(s) are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name(s); and
(iii) Respondent has registered and is using the disputed domain name(s) in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the registered mark NEXXUS, Complainant’s use of this mark and its domain name <nexxus.com> precedes Respondent’s registration of the disputed domain names.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s marks, and that Complaint meets the first criterion of, paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Respondent has not been granted any rights by Complainant to use any of Complainant’s marks. Respondent does not on the evidence before the Panel appear to make any legitimate non-commercial or fair use of the domain names. The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain names. Respondent has not rebutted this.
Respondent does not have any rights or legitimate interests in respect of the domain names and that Complainant meets the second criterion of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered the disputed domain names in bad faith.
It is probable that Respondent had actual notice of Complainant’s mark prior to registering the disputed domain names. According to Complainant’s evidence, its NEXXUS mark has been registered and is in use worldwide, and its products are sold in salons and major retail establishments, such as Wal-Mart. See Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it “inevitable that Respondent registered the domain names in full knowledge of Complainant’s rights and interests.”
Additionally, Respondent has engaged in a pattern of registering domain names incorporating variations on famous and well-known marks. Complainant alleges that Respondent (under the corporate name or in the name of its apparent principal, Steve Kerry) owns over 35,000 domain names, many of which contain typographical errors of famous marks. Whois records were provided for many of Respondent’s other registrations, which support Complainant’s allegations. Further, Steve Kerry d/b/a North West Enterprise, Inc. of Santa Fe Springs, California, United States of America, has been named as a Respondent in over 15 administrative proceedings under the Policy, all of which resulted in transfer of the disputed domain names. See Save the Children Federation, Inc. v. Steve Kerry dba North West Enterprise, Inc., WIPO Case No. D2006-0388 and cases cited therein. Clearly, such a pattern of conduct strongly supports a finding of bad faith registration in the present proceedings. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 3.3, citing Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, among others.
The Panel also finds that Respondent has used the disputed domain names in bad faith.
Paragraph 4(b)(iv) of the Policy states that there is bad faith if Respondent has attempted to attract, for commercial gain, Internet users to [his/her] website or other on-line location, by creating a likelihood of confusion, with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [his/her] website or of a product or service on [his/her] website or location.
Respondent has engaged in a practice of registering domain names containing marks registered to others, and preventing them from registering those domain names. As stated in Save the Children Federation, Inc. v. Steve Kerry dba North West Enterprise, Inc., WIPO Case No. D2006-0388, supra, “Respondent has again engaged in that practice with respect to the disputed domain name[s] here and Complainant’s trademark and service mark. Such action constitutes bad faith within the meaning of paragraph 4(b)(ii) of the Policy.”
For the reasons given above, the Panel finds that Complainant has established that Respondent has registered and used the domain names in bad faith under paragraph 4(a) of the Policy.
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 names, <nexxuscom.com>, <wwwnexxuscom.com>, and <wwwnexxus.net> be transferred to Complainant.
Sandra A. Sellers
Dated: June 16, 2006