WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alberto-Culver USA, Inc. v. Wan-Fu China, Ltd.
Case No. D2007-0717
1. The Parties
Complainant is Alberto-Culver USA, Inc., Melrose Park, Illinois, United States of America, represented by Roberts, Mlotkowski & Hobbes, P.C., United States of America.
Respondent is Wan-Fu China, Ltd., Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <nexxushair.org> is registered with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2007. On May 15, 2007, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On May 16, 2007, DomainDoorman, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 May 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 15, 2007.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on June 27, 2007. 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 company incorporated in Delaware, United States of America.
Respondent is located in the Bahamas.
Complainant purchased the NEXXUS branded hair care line less than a year ago for 46.5 million United States dollars with a potential additional 55 million United States dollars payout over the next 10 years. Since Complainant's purchase, the NEXXUS branded hair care goods have been made available through such retail giants as Wal-mart, Kmart and Jewel-Osco.
Complainant's NEXXUS trademark is registered and used worldwide. Complainant owns over 200 (two hundred) trademark registrations and applications, including in the United States of America and the Bahamas, such as:
Date of Registration
NEXXUS & design
Dec. 31, 1985
NEXXUS NEXUS X
Sept. 15, 1999
Complainant also owns several domain name registrations incorporating the NEXXUS trademark, among which <nexxus.com> and <nexxushair.com> are registered since August 6, 2005 and the former is currently used in Complainant's business.
Registrant operates a “farm link” under the disputed domain name, offering to sponsors the possibility of publishing links in the Respondent's web page. Most of such links are for sites with products and content related to hair care, and none of such sites is associated with Complainant.
Respondent has been a respondent in 10 (ten) prior UDRP complaints filed before the WIPO Arbitration and Mediation Center (SciClone Pharmaceuticals, Inc. v. Wan-Fu China, Ltd., WIPO Case No. D2007-0634, Playtex Products Inc. v. Wan-Fu China Ltd., WIPO Case No. D2007-0586, Group Kaitu, LLC and Darkside Productions, Inc. v. Wan-Fu China, Ltd., WIPO Case No. D2007-0499, Pancil, LLC v. Wan-Fu China, Ltd., WIPO Case No. D2007-0492, Ox Ideas, Inc. v. Wan-Fu China, Ltd., WIPO Case No. D2007-0400, General Electric Company v. Ted Chen WIPO Case No. D2007-0339, Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282, Pancil LLC v. Wan-Fu China Ltd., WIPO Case No. D2007-0190, Confédération Nationale du Crédit Mutuel v. Wan-Fu China Ltd., WIPO Case No. D2006-1635 and Corbis Corporation v. Wan-Fu China, Ltd., WIPO Case No. D2006-1294). Respondent failed to submit a response in all such proceedings and was ordered to transfer the domain names to the corresponding complainants.
5. Parties' Contentions
Complainant contends that its trademark NEXXUS is well-known (and provides in that regard evidence that third parties make often reference to Complainant's NEXXUS products), that the consuming public in various countries recognize the NEXXUS trademark and associate it with Complainant's quality products, and that prior to registering the disputed domain name Respondent must have knowledge of Complainant or its mark.
Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) that the domain name registered by Respondent is identical or confusingly similar to the trademarks or service marks in which Complainant has rights; and
(ii) that Respondent has no rights or no legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has proved to have rights over trademark NEXXUS, and that such trademark is used mainly in connection with hair care products. The disputed domain name is <nexxushair.org>. The addition in the domain name of the word “hair”, after Complainant's trademark, only contributed to increase the likelihood of confusion for consumers, and not to differentiate the domain name from Complainant's trademark
In that regard, a large number of UDRP cases it has already been settled that the addition of a generic term does not impair the finding of confusing similarity between a disputed domain name and a trademark. In the case of another manufacturer of personal care products, Estee Lauder, the word cosmetics was mixed with the trademark MAC in the disputed domain name <macosmetics.com> and the Panel decided (Estee LauderCosmetics Ltd; Make-Up Art Cosmetics Inc. v. Telmex Management Services, WIPO Case No. D2001-1428):
“Besides being virtually identical to Complainants' famous MAC® mark and official domain name, the infringing Domain Name is confusingly similar thereto. Specifically, Respondent merely builds on the famous MAC® mark and website address by adding the word “cosmetics” that is part of Complainants' company name and which logically would refer to a cosmetic product or service offered by Complainants. Prior ICANN panels have found that the addition of a generic word or modifier to a famous trademark in a domain name does not eliminate confusion and is evidence of bad faith. See Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (panelist transferred domain name, finding that “[i]n particular, consumers looking for information regarding the 'Microsoft Home' or 'Microsoft Home' products would assume that the website address www.microsofthome.com would take them to an official Microsoft site that provides such information”); GA Modefine SA v. Armani International Investment, WIPO Case No. D2000-0305 (panelist transferred domain name “armaniinternational” to owner of ARMANI mark since “the adjunction of the trite adjective 'international' would not modify the attractive power of the word 'Armani'“); Dell Computer Corp. v. Ewaldsson, WIPO Case No. D2000-1087 (domain names incorporating “Dell” with addition of generic terms were confusingly similar to mark and evidenced bad faith). Thus, the Infringing Domain Name is identical or at the very least confusingly similar to the MAC® Mark.
Therefore, the Panel finds that the domain name <nexxushair.org> is confusingly similar to Complainant's registered trademark NEXXUS and therefore it meets the Policy requirement.
B. Rights or Legitimate Interests
As mentioned above, no Response has been filed and the Respondent has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name.
Examining Respondent's Web page it can be observed that Respondent does not run any business activity in connection with the disputed domain name and in such Web page (which is a link farm) only posts a list of sponsored links, most of them of products that directly compete with those of Complainant. In this sense, the disputed domain name is not rightfully used by Respondent in connection with a bona fide offering of goods and services.
Respondent has not replied to the Complaint and has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name. Therefore, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.
Additionally, it has been proved in this proceeding that Respondent is engaged in a pattern involving the registration of domain names similar trademarks of other companies and has been named a respondent in 10 (ten) previous cases submitted to the WIPO Arbitration and Mediation Center (WIPO Cases see above section 4). Respondent failed to submit a response in all such proceedings and was ordered to transfer the domain names to the corresponding complainants.
From such previous cases and from the facts of this case it is clear that Respondent is in the business of registering domain names in which it has no rights or legitimate interests.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy specifies certain non-exhaustive circumstances which, if found by the Panel to be present, are evidence of the registration and use of a domain name in bad faith.
Complainant has proved that its trademark NEXXUS is being used since at least 1985 and that it is widely-known worldwide; as such, it is reasonable to assume that Respondent must have been aware of Complainant's widely-known trademark at the time of registration and use of the disputed domain name.
Complainant has already been successful in 3 (three) domain name disputes concerning trademark NEXXUS before the WIPO Arbitration and Mediation Center (Alberto-Culver Company v. North West Enterprise, Inc., WIPO Case No. D2006-0495, Alberto-Culver Company v. Jose Rodriguez, WIPO Case No. D2006-0841 and Alberto-Culver Company v. Louise Tyseng, WIPO Case No. D2006-0842). In all such cases the Panels recognized Complainant's rights over trademark NEXXUS and ordered the transfer to Complainant of the disputed domain names.
The addition of the word hair to Complainant's widely-known trademark is further evidence of bad faith, as Respondent is clearly trying to lure Internet users with an interest in Complainant's activities related to hair care products.
The fact that Respondent's Web page is a link farm and hosts a list of sponsored links also shows that Respondent intentionally uses the domain name <nexxushair.com> aiming to profit from Complainant's trademark by attracting Internet users. The confusion created by the domain name could cause potential customers of the Complaint to choose other services than the Complainant's, thereby disrupting Complainant's business.
The existence of bad faith in redirecting users to other sites that offers services and goods even if unrelated to Complainant's in order to gain profit from its reputation has been affirmed in other cases, such as ATT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 and Society for Human Resource Management v. Local Services INC., WIPO Case No. D2004-0127.
For the aforementioned reasons, the Panel finds that Respondent has registered and used the disputed domain name in bad faith. The Panel therefore concludes that the Complainant has established paragraph 4(a)(iii) 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 name <nexxushair.com> be transferred to Complainant.
Gabriel F. Leonardos
Dated: July 11, 2007