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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Toni & Guy Holdings Limited v. Jasec It Solutions Limited formerly called Salongenius (Ireland) Limited

Case No. DIE2016-0003

1. The Parties

The Complainant is Toni & Guy Holdings Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by MacLachlan & Donaldson, Ireland.

The Registrant is Jasec It Solutions Limited formerly called Salongenius (Ireland) Limited of Dublin, Ireland.

2. The Domain Name and Registrar

The disputed domain name <salongenius.ie> is registered with IE Domain Registry Limited (“IEDR”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2016, via email. On July 29, 2016, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On August 2, 2016, IEDR transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on August 9, 2016.

The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceeding commenced on August 17, 2016. In accordance with the Rules, paragraph 5.1, the due date for Response was September 14, 2016. The Registrant did not submit any Response. Accordingly, the Center notified the Registrant’s default on September 15, 2016.

The Registrant sent an email communication to the Center on September 15, 2016.

The Center appointed Adam Taylor as the sole panelist in this matter on September 22, 2016. 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

The Complainant, a UK company, has distributed a salon software management system under the name “Salon Genius” since 1998. Its software has been installed in salons in at least 48 countries. The Complainant’s main website is “www.salongenius.com”.

The Complainant owns European Union Trade Mark No. 950055 for SALON GENIUS, filed on October 7, 1998, and registered on January 24, 2000, in classes 9, 16 and 35.

The disputed domain name was registered on October 24, 2008.

Since 2008, the Registrant (originally known as Salongenius (Ireland) Limited) was a distributor of the Complainant’s software on foot of a verbal agreement. The distribution agreement was terminated by letter dated September 21, 2015, from Mascolo Support Systems Limited, an indirect subsidiary of the Complainant. That letter requested that the Registrant cease all use of “any website […] incorporating the salongenius name.”

On November 17, 2015, the Registrant changed its name to Jasec IT Solutions Limited.

As of February 17, 2016, the disputed domain name redirected to a holding webpage located at the URL “nial05.wix.com/website-coming-soon”. The page was branded “SalonIT. Supporting your business.” and it went to state: “WE ARE CURRENTLY WORKING ON A BRAND NEW WEBSITE. Stay Tuned. We are launching very soon […]”.

5. Parties’ Contentions

A. Complainant

A summary of the Complainant’s contentions is as follows:

The disputed domain name is identical or misleadingly similar to the Complainant’s protected identifier “Salon Genius”.

At no stage was the Registrant granted proprietary rights name in the name “salongenius”. The Complainant is the legitimate owner of that name whereas the Registrant has no rights therein.

Notwithstanding the letter to the Complainant dated September 21, 2015, the Registrant retained the disputed domain name and used it to redirect business to a different website. The Registrant thereby intentionally attempted to attract Internet users to a website by creating confusion with the Complainant’s protected Identifier.

B. Registrant

The Registrant did not reply to the Complainant’s contentions.

In its email communication to the Center on September 15, 2016 the Respondent said: “I would like to state th[at] I have no further need for the domain name, salongenius.ie and as such, I consent to discontinuing its use. This consent is based on me not being held in any way responsible for any costs that the complainant may have incurred.”

6. Discussion and Findings

Paragraph 1 of the IEDR Policy requires the Complainant to prove that:

- the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights (paragraph 1.1.1); and

- the Registrant has no rights in law or legitimate interests in respect of the disputed domain name (paragraph 1.1.2); and

- the disputed domain name has been registered or is being used in bad faith (paragraph 1.1.3).

A. Identical or Misleadingly Similar

Under paragraph 1.3.1 of the IEDR Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”. The Complainant’s European Union Trade Mark for “SALON GENIUS” therefore constitutes a “protected identifier” for the purpose of the IEDR Policy.

Accordingly, the Panel concludes that, disregarding the country-code Top-Level Domain (“ccTLD”) suffix “.ie”, the disputed domain name is identical to a protected identifier in which the Complainant has rights.

B. Rights in Law or Legitimate Interests

The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Registrant to rebut the presumption of absence of rights in law or legitimate interests thereby created. See, e.g., Travel Counsellors plc and Travel Counsellors (Ireland) Ltd v. Portlaoise Travel Limited, WIPO Case No. DIE2006‑0001.

Paragraph 3.1 of the IEDR Policy specifies three non-exhaustive factors which may be considered as evidence of rights or legitimate interests including, in paragraph 3.1.1, where the Registrant can demonstrate that, before being put on notice of the Complainant’s interests in the disputed domain name, it has made demonstrable good faith preparations to use the disputed domain name in connection with a good faith offering of goods or services, or operation of a business.

The Complainant has asserted lack of rights or legitimate interests but the Registrant has not come forward with evidence of good faith preparations or use of the disputed domain name. (Even if the Registrant had done so, it is an open question as to whether that would have sufficed insofar as the Complainant is relying on a later bad faith use; however, it is unnecessary to consider this point given the lack of evidence from the Registrant.)

There is no evidence that paragraphs 3.1.2 or 3.1.3 of the IEDR Policy apply in the circumstances of this case.

The Panel finds that the Complainant has established a prima facie case of lack of rights in law or legitimate interests and there is no rebuttal by the Registrant.

The Panel concludes that the Registrant has no rights in law or legitimate interests in the disputed domain name and that the second condition in paragraph 1.1 of the IEDR Policy has therefore been satisfied.

C. Registered or Used in Bad Faith

The facts of this case bear some similarity to those in another recent decision under the IEDR Policy where this Panel stated:

“Unlike in the case of the Uniform Dispute Resolution Policy, under the IEDR Policy a complainant is only required to prove registration or use in bad faith. In the Panel’s view, even if the Registrant registered the disputed domain name in good faith in the context of the distribution agreement, the refusal by the Registrant to transfer the disputed domain name to the Complainant after termination is liable to constitute use in bad faith in circumstances where the Registrant had no legitimate reason to retain the disputed domain name and where the disputed domain name reflects the Complainant’s distinctive trade mark without adornment.”

See Begum Ozdamar on behalf of Kosan Kosmetik Sanayi Ve Ticaret Anomin Sirketi v. Kieran Flynn, Chem - Marks Limited, WIPO Case No. DIE2016-0002.

Similarly, here, the disputed domain name reflects the Complainant’s distinctive trade mark without adornment and, even if the Registrant was justified in registering and using the disputed domain name during the period of the distribution agreement, the Registrant has no legitimate reason to retain the disputed domain name following its (undisputed) termination; certainly the Registrant has asserted no such reason. Far from contesting the Complainant’s assertions by filing a Response, the Registrant has simply emailed the Center to say that it “had no further need” for the disputed domain name and that it consented “to discontinuing its use”.

While there is no evidence that the Complainant requested transfer of the disputed domain name, it did ask the Registrant to stop using any website incorporating its trade mark. Not only did the Registrant fail to comply, it used the disputed domain name for a website promoting its proposed new business, the name of which (“SalonIT”) implies that it will compete with the Complainant’s business.

Based on the foregoing, the Panel concludes that the Complainant has established on a prima facie basis (per paragraph 1.4 of the IEDR Policy) that the Registrant has used the disputed domain name in bad faith and that the third condition in paragraph 1.1 of the IEDR Policy has therefore been satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name <salongenius.ie> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Dated: October 10, 2016

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