The Complainant is Alberto-Culver International, Inc. of Melrose Park, Illinois, United States of America, represented by Latimer & Mayberry IP Law LP, United States of America.
The Respondent is Goodsteed Limited / Domains by Proxy, Inc. of Nicosia, Cyprus and Scottsdale, Arizona, United States of America.
The disputed domain name <tresemmehairdryer.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2009. On December 7, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 8, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In particular, the Registrar confirmed that the name of the registrant of the disputed domain name is Goodsteed Limited, of Nicosia, Cyprus. The Center sent an email communication to the Complainant on December 9, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
The Complainant chose not to file an amendment to the Complaint to name the registrant, rather than Domains by Proxy, as the Respondent or to add the disclosed registrant information. This was because the Complainant proceeded against the registrant as it was listed in the WhoIs record at the time of the filing of the Complaint. However, for convenience, in this case the Panel has included in the decision the name of the underlying registrant identified by the registrar in the definition of “the Respondent”.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was initially set at January 5, 2010.
On December 21, 2009, the Respondent sent an email to the Complainant's counsel which relevantly stated “I am prepared to transfer it back to your client if you provide me with the details. It was registered in good faith to create a social shopping portal for Tresemme hair dryer providing a q&a and information service”.
In response to that email, the Center invited the Complainant to consider requesting a suspension of the proceedings to explore a possible settlement between the parties. In response to such a request made by the Complainant on December 22, 2009, the Center suspended the proceedings.
On January 6, 2010, the Complainant's counsel sent an email to the Center stating that the Respondent had “repeatedly ignored our correspondence after his indication that he will transfer the domain name…”. Following a formal signed request from the Complainant on January 18, 2010, the proceedings were reinstituted on January 19, 2010.
The new due date for Response was February 2, 2010. The Response was filed with the Center on February 4, 2010.
The Center appointed James A. Barker as the sole panelist in this matter on February 16, 2010. 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.
The disputed domain name was registered on November 22, 2009.
At the date of this decision, the disputed domain name reverts to a website with the prominent statement “Tresemme Hair Dryer” below which is the statement: “Is a independent Social Shopping site which allows you to compare, review and purchase the Tresemme Hair Dryer from the best retailers on the web. We are not affiliated with the trademark owners or manufacturer.” The website advertises various “Tresemme Hair Dryers” for sale.
From evidence in the Complaint, on December 1, 2009, the disputed domain name did not revert to an active website.
The Complainant says that it is the owner of more than 100 trademark registrations and applications for the TRESEMME mark, in a large number of jurisdictions. The Complainant provides no direct evidence (such as a copy of a registration certificate). The Complainant provided a list of the pending or registered marks it owns and summary details of those marks, including reference to a mark registered in Cyprus, where the Respondent has its address. The Complainant also owns domain names that correspond to its mark, including <tresemme.com> and <tresemme.co.uk>.
The Complainant uses its mark in connection with hair care products and services. The Complainant says that, because of the extensive advertising of its mark, the mark is well-known in many countries. To this effect, the Complainant provides evidence of webpages from its own websites referred to above, as well as references to its products on a number of other websites.
The Complainant says that the disputed domain name is virtually identical to its mark, and that the addition of the term “hair dryer” implies that the Respondent's website is the Complainant's. The Complainant refers to past cases under the Policy for support, including Lilly ICOS LLC v. Loris Mosser, WIPO Case No. D2005-1157.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant says that the Respondent registered the disputed domain name either to profit from selling it, or to use it to exploit the Complainant's trademark. While there was no substantive content on the Respondent's website, past UDRP panels have found bad faith in circumstances of passive holding of a domain name. There is no evidence that the Respondent has a trade name corresponding to the disputed domain name, or that the Respondent has any relevant trademarks.
The Complainant also says that past UDRP decisions have also recognized that the use of a WhoIs protection service is often evidence of bad faith. The Respondent was no doubt aware of the Complainant's rights in its TRESEMME mark at the time the Respondent registered the disputed domain name. When a trademark is famous, there is a prima facie inference of bad faith. E.g. Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362.
On February 3, 2010, the Respondent sent an email to the Center stating that “Having had more time to seek advice. We are of the understanding that we are not breaking any rules with our use of TresemmeHairdryer.com and refer to WIPO Case No. D2008-0936”. (The latter case was ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936.)
The Response was filed on February 4, 2010. (While it was filed two days after the revised due date, the Panel has accepted the Response as the delay was not significant, and to ensure fairness in accordance with paragraph 10(b) of the Rules.) In the Response, the Respondent says that its website is used to sell “tresemme hair dryers”, as well as providing a “public service relating the free and open opinions about tresemme hair dryers…”. The Respondent refers again to the case cited above. The Respondent says that its website has nothing to do with the trademark owners or any other company.
The Respondent also denies that it acted in bad faith in any of the ways described in paragraph 4(b) of the Policy.
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows.
The first thing which the Complainant must establish under this ground is that it “has rights” in a trademark. The Complainant provided a summary list of the suite of trademarks it owns. A sample check of some of those marks by the Panel confirms the Complainant's ownership. For example, the Complainant has registered marks on the principal register of the U.S. Patent and Trademark Office (Registration Numbers 0952314 and 0992124) registered in 1973 and 1974.
The second thing the Complainant must establish is that the disputed domain name is identical or confusingly similar to its mark. The disputed domain name is not identical to the Complainant's TRESEMME mark. However the Panel finds that it is clearly confusingly similar. That domain name entirely incorporates the Complainant's mark. Being a registered mark, it is entitled to a presumption of distinctiveness. See e.g. EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Owens Corning Fiberglas Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903. In addition, the Complainant's mark is registered in a substantial number of jurisdictions. It has been registered in a number of them for a substantial period. The Complainant also provides evidence of the use of its mark in on-line marketing. Collectively, this evidence is sufficient to indicate to the Panel that the Complainant's mark is distinctive and well-known in its industry.
The disputed domain name adds the descriptive term “hair dryer” to the Complainant's mark. Hair dryers are a product marketed by the Complainant in connection with its mark. As such, the inclusion of that term in the disputed domain name has the potential to further increase confusion.
For these reasons, the Panel finds that the Complainant has established this element.
The Respondent advances a number of apparent arguments as to why it has a right or legitimate interest in the disputed domain name.
One is that the Respondent says it is using the disputed domain name to offer “Tresemme Hair Dryers” for sale. The Respondent does not spell out further why it believes this gives it rights or legitimate interests. The Panel can only speculate. It might be that the Respondent is claiming to provide a bona fide offering of goods and services, which under paragraph 4(c)(i) of the Policy is demonstrative of rights or legitimate interests. The Respondent itself provides no evidence that it is, in fact, doing any such thing. It is only the Panel's own investigation that indicates that the Respondent is using its website in an apparent offering of “Tresemme Hair Dryers”. The Panel has made that investigation in accordance with paragraph 10 of the Rules. And it is clear that such an investigation can be made: it reflects a majority of panel views about the capacity of a panel to undertake independent research (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5). However, evidence obtained in that way can obviously suffer from a lack of explanation which a party's submission might give it. It may be, inherently, weaker evidence for that reason.
In the absence of a further explanation from the Respondent, the evidence does not sufficiently indicate that the Respondent has a right or legitimate interest for the purpose of paragraph 4(c)(i) of the Policy. The Complainant provides evidence that the Respondent had no active website in early December. As such, the Respondent's website cannot have been operating for more than a few months at most. There is no evidence from the Respondent as to whether it has rights as a licensee to offer products for sale. There is no corroborating evidence that it makes any sales, or operates a genuine business. For the reasons set out below, it is also difficult to avoid the inference that the Respondent was aware of the Complainant's mark, and registered the disputed domain name because of its association with that mark. The registration of a disputed domain name for that reason cannot be bona fide, for the purpose of paragraph 4(c)(i) of the Policy.
A second argument which seems to be advanced by the Respondent is that it is an unauthorized reseller of the Complainant's products. The Respondent does not make this argument explicitly. However, the Respondent refers to the case of ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936. That case dealt with the registration of a domain name by an unauthorized reseller, and was a case in which the Complaint was denied.
The Panel does not however consider that that case provides a strong comparison to the facts of this one. In that case, the then panel referred to the prevailing view of panelists on the question of whether a reseller has a right or legitimate interest, by reference to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.3, and Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. In the latter case, the then panel concluded that the use of a manufacturer's trademark as a domain name by a dealer or reseller (an authorized dealer in that case) should be regarded as bona fide within the meaning of paragraph 4(c)(iii) of the Policy if the following conditions are satisfied:
The respondent must actually be offering the goods or services at issue;
The respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
The site itself must accurately disclose the respondent's relationship with the trademark owner; and
The respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
While the Respondent might meet the last criterion, it does not clearly meet any of the others. The evidence that the Respondent is actually offering goods and services is not provided in the case file – the only evidence being that found by the Panel on its own investigations. The Panel is not willing to give that information much weight for the reasons set out above. There is also no evidence of any such offering at the time the Complaint was filed.
As to the second criterion, the relevant “trademarked goods”, referred to in the Oki Data case, must be those of the Complainant. Here the Respondent's website appears to sell goods of possible competitors of the Complainant. (Although, on this point, the Respondent did not clearly explain the nature of the goods it says are offered for sale on its site.)
In relation to the third criterion, as at the date of this decision, the Respondent's website contains the statement “We are not affiliated with the trademark owners or manufacturer.” The Panel however considers that this general statement falls short of a disclosure of the Respondent's relationship with the Complainant. It is a statement which tries to distance the Respondent from any trademark owner. The Panel has no evidence as to when that website might have been established, or when that statement was inserted. As such, the Panel cannot rule out the possibility that the statement was inserted after or contemporaneously with the filing of the Response to support the Respondent's case in this dispute. The Panel therefore has insufficient evidence on which to judge whether that statement was a genuine attempt, unconnected with this dispute, to clarify the nature of the Respondent's business in relation to the trademarked goods.
There is otherwise no evidence of circumstances that might demonstrate a right or legitimate interest, as set out in paragraph 4(c) of the Policy.
The Respondent suggests that its website also provides a “public service”. However, the Panel considers that any such service which is provided via the Respondent's website (by e.g. purported discussion forums) is incidental to the website's main purpose, which is directed to the possible sale of “Tresemme Hair Dryers”.
The Panel has also turned its mind to whether the term “tresemme” has some descriptive meaning on which the Respondent might have based its interests. Neither party however provided evidence in this respect. The Complainant claims that its TRESEMME mark is a unique identifier. The Respondent's website refers to e.g. “Philips Tresemme” hair dryers - which suggests that such products might not be exclusively associated with the Complainant. However, because no evidence on this point was provided, the Panel has made no findings concerning it.
For these reasons, the Panel finds that the Complainant has established this second element.
The Complainant says that it is inescapable that the Respondent registered the disputed domain name with knowledge of the Complainant's marks. The Complainant says that the Respondent has sought to unfairly exploit the value of that mark, either by selling it, misleadingly diverting Internet users, or to prevent the Complainant from registering it. The Respondent denies relevantly acting in bad faith.
There is little evidence in this case that the Respondent registered and has used the disputed domain name to sell it or prevent the Complainant from registering it. However, the Panel considers that all the evidence suggests that the Respondent has sought to misleadingly divert Internet users. Relevantly, paragraph 4(b)(iv) of the Policy provides that the following circumstances, if found by the Panel, are evidence of bad faith:
“(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location”.
Based on the evidence in this case, the Panel considers that the disputed domain name has been used in such circumstances. As noted above, the disputed domain name is confusingly similar to the Complainant's mark. The Respondent has registered it without a legitimate interest in so doing. The Respondent is also likely to have been aware of the Complainant's mark. The Complainant's evidence indicates that its mark is well-known, and registered in a large number of jurisdictions, including that where the Respondent (the registrant in fact) has its address. The Respondent claims to operate in a closely related field of business concerning the sale of hair dryers. It might be expected that the Respondent would be aware of a large operator in the same field. On top of this, the Respondent has used a privacy service to mask its identity and provided no explanation for doing so. As noted by the Complainant, past cases under the Policy have found the use of a privacy service to, in certain circumstances, be indicative of bad faith.
For these reasons, the Panel finds that the Complainant has established this third element.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <tresemmehairdryer.com> be transferred to the Complainant.
James A. Barker
Dated: March 2, 2010