The Complainant is Referral Experts LLC of Orem, Utah, United States of America, represented by Abbott & Associates P.C., United States of America.
The Respondent is Cornerstone Marketing Group of St. Albert, Alberta, Canada and Edmonton, Alberta, Canada.
The disputed domain name <lookingyourbestinc.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2010. On March 23, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 23, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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” 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 April 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 28, 2010.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on May 3, 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 background information about the Complainant is taken from the Complaint.
The Complainant is in the business of providing online marketing and referral services for plastic surgeons.
The Complainant is the holder of the following trademark and trademark application at the United States Patent and Trademark Office (USPTO):
LOOKINGYOURBEST.COM, Reg. No. 2964902, filed February 19, 2003, registered July 5, 2005 (service mark);
LOOKINGYOURBEST, Application No. 77911447, filed January 13, 2010 (service mark).
The Complainant operates through the domain name <lookingyourbest.com>, which was registered in May 2002.
The Respondent did not submit a formal Response. According to the Complainant the Respondent is a member of the Association of Image Consultants International and provides services to business professional and other individuals seeking to improve their image.
The disputed domain name appears to have been registered on August 20, 2008.
The Complainant has submitted documentary evidence of its trademark and trademark application as detailed in section 4 above, and claims first usage in commerce of the trademarks on November 2, 2002.
The Complainant contends that the disputed domain name is confusingly similar to its trademarks. The only difference is that the Respondent has added the entity “inc” to the component “lookingyourbest” to form the disputed domain name. The Complainant contends that such a suffix does not detract from confusing similarity.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name and points out that the Complainant has used its own domain name <lookingyourbest.com> for its legitimate business purposes since six years prior to the registration of the disputed domain name. The Complainant's research has failed to establish any legitimate interest by the Respondent in the disputed domain name.
The Complainant says that the disputed domain name was registered and is used in bad faith. It says that the prior registration of the Complainant's trademark means that the Respondent had constructive notice of it before registering the disputed domain name. The Complainant says that even if the disputed domain name were to have been registered without the intention, the effect of its use is likely to lead to the diversion of potential clients from the Complainant to the Respondent, as envisaged by paragraph 4(b)(iv) of the Policy.
The Complainant provides documentary evidence of having written a cease and desist letter dated January 27, 2010 through its lawyer to the Respondent. A reply was received from the Respondent's lawyer dated March 2, 2010, vigorously defending its position.
The Complainant requests the transfer to it of the disputed domain name.
The Respondent did not reply formally to the Complaint through the Center. According to documentation reproduced in the Complaint, the Respondent wrote on March 2, 2010 in reply to the Complainant's cease and desist letter, denying the allegations.
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Panel is satisfied by the documentary evidence that the Complainant has rights in the trademark LOOKINGYOURBEST.COM that was filed at the USPTO on February 19, 2003, and was registered as a service mark on the Principal Register on July 5, 2005. The Panel is also satisfied that the Complainant on balance has at least common law rights in the trademark LOOKINGYOURBEST, which it states to be in use in an application to the USPTO for registration dated January 13, 2010.
The disputed domain name is <lookingyourbestinc.com>, which differs from the Complainant's trademark LOOKINGYOURBEST.COM by inclusion of “inc”, being the abbreviation for “incorporated”. It is well established that in the determination of confusing similarity under the Policy, additional words or letters such as “inc” are not usually distinguishing. Generally for the purposes of determining confusing similarity the domain name gTLD indicator such as “.com” is disregarded and in this case the remaining entity is “lookingyourbestinc”. The Panel finds this to be so similar to the Complainant's registered trademark LOOKINGYOURBEST.COM as to constitute confusing similarity under paragraph 4(a)(i) of the Policy. The disputed domain name is also found to be confusingly similar to the trademark LOOKINGYOURBEST for which the Complainant has filed application and which is in use.
It is conventional for the Complainant to state a prima facie case with reasons as to why the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent then has the opportunity to establish rights or legitimate interests in the terms of paragraph 4(c) of the Policy, or otherwise to the satisfaction of the Panel.
Paragraph 4(c) of the Policy states that any of the following circumstances, without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a respondent's rights or legitimate interests in the disputed domain:
“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
On January 27, 2010, the Complainant's lawyer wrote a cease and desist letter to the Respondent under the heading “Re: Trademark Infringement; Referral Experts d.b.a. Looking Your Best.com”. The Respondent's lawyer replied on March 2, 2010, stating among other things that the principal of the Respondent company had carried on business in Canada as an image consultant providing advice on matters such as self esteem, personal style, wardrobe selection and career consulting, and had done so since 1988 under the name and style “Looking Your Best”. The letter stated that the Respondent's website was created in approximately 2002.
Thus the Respondent has asserted, in effect, although without any reference to the Policy or to any impending proceeding under it, that it has used a name corresponding to the disputed domain name for a bona fide offering of goods or services since before notice of the dispute, such as might satisfy paragraph 4(c)(i) of the Policy. It also asserts in effect that it has been commonly known as a business by the disputed domain name or a similar name.
These are verifiable matters of which the Complainant had notice in relation to any possible Response in the event of a Complaint and the Panel expresses its disappointment that the Complainant apparently did not itself attempt to clarify them directly with the Respondent before lodging the Complaint.
Notwithstanding the Respondent's assertions in its letter to the Complainant, it has not submitted a formal Response. Neither in that letter nor to this proceeding has the Respondent adduced any evidence, such as original telephone or business directory entries, photographs, brochures, correspondence or invoices, of matters that it asserted vigorously and that one might expect to have been factually verifiable.
Furthermore there is evidence that does not support the Respondent's assertions. According to the relevant WhoIs, the disputed domain name was registered on August 20, 2008, five years after the Complainant's trademark LOOKINGYOURBEST.COM was filed and three years after it was registered. The Respondent has not expanded on its initial claim “[t]he website was created in approximately 2002...” and could therefore be referring to the website “http://shirleyborrelli.com”, to which the disputed domain name currently redirects viewers. No entry was found for the disputed domain name in the Wayback Machine archive, which the Panel has consulted in accordance with its power to view certain information on public record (WIPO Overview of WIPO Panel Views on Selected UDRP Questions at paragraph 4.5). It is not known why there is no archive, but the Wayback Machine freely enables its archiving activities to be blocked by website owners.
Thus the Panel, upon its evaluation of all evidence presented, does not find that the Respondent has rights or legitimate interests in the disputed domain name in the terms paragraph 4(c)(i) of the Policy. The words “in connection with” in paragraph 4(c)(i) of the Policy cannot reasonably be interpreted as legitimising a domain name by virtue of its being redirected to an otherwise legitimate business or domain name. The disputed domain name is not used for any other purpose than to redirect visitors to the website at “http://shirleyborrelli.com”. That website is not known as “Looking Your Best” or “Looking Your Best Inc” and makes no more than everyday usage of the phraseology connected with looking one's best. Thus the Panel does not find that the Respondent has rights or legitimate interests in the disputed domain name in the terms of paragraphs 4(c)(ii) of the Policy. The use of the disputed domain name cannot be considered noncommercial or without intent for commercial gain within the meaning of paragraph 4(c)(iii) of the Policy.
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark 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 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.
According to the evidence, the Respondent operates what may well be a legitimate business for the supply of goods and services and the portrayal of advertising at the website “http://shirleyborrelli.com”. The Respondent's website is headlined “Shirley Borrelli Image Consulting”, and it is accepted that its field of business includes, in a non-trademark sense, assisting people to “look your best”.
The basis of the Complaint regarding bad faith is that the Respondent uses the disputed domain name for the purpose of redirecting visitors to “http://shirleyborrelli.com”. The evidence in support of this contention is clear. The words “Looking Your Best Inc” embodied in the disputed domain name have been found to be confusingly similar to the Complainant's trademark. It may reasonably be anticipated that a proportion of Internet users looking for the Complainant's trademark, through a search engine or otherwise, may find their way to the website corresponding to the disputed domain name, and may be confused initially into believing it to have the endorsement of the Complainant. The Respondent's website to which it redirects viewers is commercial. Accordingly the Panel finds that the disputed domain name was registered and is used in bad faith in the terms of paragraph 4(b)(iv) 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 disputed domain name <lookingyourbestinc.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: May 17, 2010