WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pivot Point International, Inc. v. Cng ty TNHH TM DV Nam Dai Duong and Pivot-Point International Limited

Case No. D2011-0460

1. The Parties

The Complainant is Pivot Point International, Inc. of Evanston, Illinois, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.

The Respondents are Cng ty TNHH TM DV Nam Dai Duong and Pivot-Point International Limited of Ho Chi Minh, Viet Nam.

2. The Domain Names and Registrars

The Disputed Domain Names <pivot-point.biz> and <pivot-point.net> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (“Directi”).

The Disputed Domain Name <pivot-point.info> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2011. On March 11, 2011, the Center transmitted by email to Directi and eNom a request for registrar verification in connection with the Disputed Domain Names. On March 11, 2011, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name <pivot-point.info> which differed from the named Respondent and contact information in the Complaint. On March 13, 2011, Directi transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names <pivot-point.biz> and <pivot-point.net> which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 18, 2011.

The Center verified that the Complaint together with the amended 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 March 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2011. On April 13, 2011, the Center received email communications from the Respondent Cng ty TNHH TM DV Nam Dai Duong. On April 25, 2011, the Center received an email communication from the Complainant.

The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on April 20, 2011. 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.

On April 28, 2011 the Panel issued the Administrative Panel Procedural Order No. 1 seeking further statements from the parties relating to the Respondents’ rights or legitimate interests in the Disputed Domain Names. The Complainant filed a further statement in response on May 2, 2011 and the Respondents responded by email on April 28, 2011, April 29, 2011 and May 3, 2011, respectively. On May 5, 2011, the Center informed the Parties that the Decision due date was extended to May 9, 2011.

4. Factual Background

The Complainant is a provider of educational services and related products to the hair and beauty industry, in particular, it specializes in the provision of training courses to hair stylists. It has been operating for over 50 years and currently has a presence in more than 70 countries.

The Complainant conducts its business under the brand “Pivot Point” and has registered trade marks relating to this brand in many countries. In the United States, for example, the Complainant has trade mark registrations for PIVOT POINT for education and training in hair styling and design dating back to 1969 (United States trade mark registration number 72302759).

The Complainant operates its business online through its website at <pivot-point.com>.

The Disputed Domain Names were all registered on or after November 6, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant contends that its Pivot Point brand is well-known throughout the world and that it established a presence in Vietnam using this brand in 2006.

The Respondents

The Respondents are two entities which between them own the Disputed Domain Names. The Disputed Domain Names all redirect to a common webpage. The Complainant contends that this and other evidence submitted indicates that the Respondents are linked or are under common control.

Dealings between the parties

Around the beginning of 2010, responding to a request from one of the Respondents, the Complainant expressly refused to grant distribution rights. The same Respondent has recently applied for trade marks relating to the Complainant’s “Pivot Point” brand in Vietnam, including an application incorporating the Complainant’s most recently adopted stylized logo. These trade mark applications are being opposed by the Complainant.

The Complainant’s local attorneys wrote to the Respondent Cng ty TNHH TM DV Nam Dai Duong on December 13, 2010 requesting the transfer of the Disputed Domain Names. No response was received to this letter.

Identical or confusingly similar

The Complainant contends that the Disputed Domain Names are confusingly similar to its trade marks, as each one incorporates fully PIVOT POINT. Furthermore, the Disputed Domain Names only differ from the Complainant’s main domain name in terms of the generic top level domain (i.e. “.biz,” “.info” and “.net” vs. “.com”).

No Rights or legitimate interests

The Complainant has not authorized the Respondents to use any of the Complainant’s PIVOT POINT trade marks. Furthermore, the Complainant submits that the Respondents are not commonly known by the name “Pivot Point”: the Respondent’s applications to register trade marks in Vietnam relating to the Complainant’s “Pivot Point” brand, one of which incorporates the Complainant’s logo, are said to demonstrate bad faith.

The webpage to which each of the Disputed Domain Names diverts is said to generate revenue from click through advertising and also to promote the business of RPR Vietnam, a trading name of one of the Respondents and a provider of training courses for hair stylists. It is contended that this is not a bona fide offering of goods or services because the Respondents are using the Complainant’s trade marks to promote their own services that compete with those of the Complainant. Furthermore, it is said that such use is commercial in nature and involves the diversion of Internet users from the Complainant’s own website.

Registered and being used in bad faith

The Complainant contends that the Respondents were well aware of the Complainant’s PIVOT POINT trade marks at the time they registered the Disputed Domain Names and that the Respondents registered the Disputed Domain Names in order to misappropriate the goodwill of the Complainant for commercial gain.

The Complainant also submits that the fact that the Respondents have chosen to mirror the hyphenated format that the Complainant uses for its main domain name indicates that the Respondents have intentionally sought to create a false impression that there is a link between the Respondents and the Complainant.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. Neither the first email communication received by the Centre from one of the Respondents on 13 April 2011 nor any other email communications received from the Respondents specifically addressed any of the issues raised in the Complaint.

6. Discussion and Findings

To be satisfied that the Complaint is made out and to order the transfer of the Disputed Domain Names, the Panel must be satisfied that each of the following three elements set out under paragraph 4(a) of the Policy is made out:

(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondents have no rights or legitimate interests in the Disputed Domain Name; and,

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

The Panel is satisfied that the Disputed Domain Names and the website to which they resolve are subject to common control and that it is fair and equitable to all parties to proceed to render a decision in this case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.16 (“WIPO Overview 2.0”).

A. Identical or Confusingly Similar

The Disputed Domain Names all incorporate the Complainant’s trade marks in full. The only difference between the Complainant’s trade marks and the Disputed Domain Names is the inclusion of a hyphen to separate the two words of the trade mark and the inclusion of the generic top level domain name. These differences are trivial. Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s trade marks and is satisfied that the requirement under paragraph 4(a)(i) of the Policy has been established.

B. Rights or Legitimate Interests

Previous UDRP panels have recognized that it is easier for a respondent to establish positive rights or legitimate interests in a disputed domain name than it is for a complainant to establish the negative. Accordingly, it has been frequently considered that if a complainant establishes a prima facie case, then the burden of proof shifts on to the respondent to establish positive rights or legitimate interests. The Panel considers this approach to be appropriate to this case.

The website hosted at the Disputed Domain Names appears to have two aspects to it. First, it provides a forum for people to post comments on various aspects of hair styling. Second, it promotes the business of the Respondents. This latter function is served by the inclusion of various video clips of hair styling related events hosted by the Respondents and links to the Respondents’ main commercial website. This aspect of the website, while not the dominant aspect, is a nevertheless relatively prominent feature of it.

The services of the Respondents being promoted using the Disputed Domain Names compete with those offered by the Complainant and for which the Complainant has a reputation, that is to say, in particular, training courses for hair stylists. These activities, because they compete directly with the services offered by the Complainant, cannot be considered to be bona fide.

The promotion of the Respondents’ business using the Disputed Domain Names is clearly commercial in nature. As a result the Respondents are not able to rely on the legitimate noncommercial or fair use defense. Moreover, these activities seek to divert consumers to the Respondents’ business under false pretences, by giving them the impression that the Respondents’ business is associated in some way with that of the Complainant.

Finally, although the name of one of the Respondents appears to be Pivot Point International Limited, the Complainant asserts that the Respondents’ are not commonly known by the Disputed Domain Names. The Complainant contends that “Pivot Point International Limited” is a fake name. Previous UDRP panels have recognized that it is possible for a deceptive registrant to use a phony business name to register a domain name with the intent to support a claim of the registrant’s rights or legitimate interests in the domain name (see Windsor Fashions, Inc. v. Windsor Software Corporation, WIPO Case No. D2002-0839).

In its Complaint, the Complainant did not provide any support for its assertion that the Respondent’s name “Pivot Point International Limited” is a fake or for its belief that the Respondents are not commonly known by the Disputed Domain Names. Accordingly, by the Administrative Panel Procedural Order No.1, the Panel invited the parties to submit a further statement to address these points. Both parties filed statements.

The Complainant claims that it has engaged legal counsel in Vietnam to investigate the Respondents and that these investigations revealed nothing to suggest that “Pivot Point International Limited” was a real name or that the Respondents were commonly known by “Pivot Point”. In support of this, the Complainant produced an extract from a letter of advice received from the Complainant’s counsel in Vietnam. In this extract, the Complainant’s counsel says that Pivot Point International Limited “is considered as a fake name”. However, the investigations conducted to support this conclusion are not documented. There is a suggestion that the Respondents have been investigated “widely and deeply”, but this is somewhat undermined by the suggestion that “an official investigation” would have to be undertaken prior to the commencement of any litigation.

The Complainant also submitted printouts from a Google search for “Pivot Point International Limited” revealing only references to the Complainant on the first three pages of results. The Panel is not particularly impressed by this evidence either. The Panel has conducted its own Google search for “Pivot Point International Limited” in quotation marks (to seek exact matches), which reveals a few hits for the Respondents.

On balance, the Panel finds that the Complainant has established a prima facie case that the Respondent is not commonly known by the Disputed Domain Names. In reaching this decision the Panel has taken at face value the Complainant’s submission that the position has been investigated, even though the details of the investigations actually conducted have not been revealed. Thus the burden shifts to the Respondents to establish that they have rights or legitimate interests in the Disputed Domain Names. This should not be a particularly onerous burden for the Respondents to discharge if true.

The Respondents have had ample opportunity to address this issue and provide evidence that “Pivot Point International Limited” is a genuine name, i.e. not one that has been concocted for the purpose of lending legitimacy to the registration of the Disputed Domain Names. In particular, the Respondents did not address the specific issues raised in the Administrative Panel Procedural Order No.1, but instead took this opportunity to make general comments about not accepting the Complaint and referencing several brands which incorporate the words “Pivot Point”, which presumably are not associated with the Complainant’s business. The Panel does not find any of these to be probative to the particular issue with which the Administrative Panel Procedural Order No.1 is concerned. What is interesting, however, about the Respondents’ statements in reply to this Order is that they refer to themselves as “Pivot Point International Training Limited”. This is different from “Pivot Point International Limited”, the name of one of the Respondents on record, in that it includes the word “Training”. The Respondents have therefore done nothing by their reply to satisfy the Panel that “Pivot Point International Limited” is a genuine name or that the Respondents have been commonly known by the Disputed Domain Names.

For completeness the Panel notes that one of the Respondents has applied to register trade marks in Vietnam which include PIVOT POINT. At least one of these applications was made before registration of the Disputed Domain Names. Ordinarily, such facts might support the Respondents’ rights or legitimate interests in the Disputed Domain Names, however, in this case, taking into account the nature of these registrations and the fact that they are being opposed by the Complainant as well as the points made above, the Panel is inclined to think that these applications are artificial so far as creating a legitimate interest in “Pivot Point” and thus the Disputed Domain Names are concerned.

In light of the above, the Panel concludes that the Complainant has satisfied the condition set out in the Policy, paragraph 4(c). Accordingly, the requirement under paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

The Complainant’s brand is well-known internationally among hair stylists and has been used in Vietnam since 2006, and in the United States since 1969. Given that the Respondents operate in exactly the same business sector, namely the provision of training course to hair stylists, it is highly likely that the Respondents were aware of the Complainant’s rights in PIVOT POINT at the date of registration of the Disputed Domain Names. This is supported by the fact that one of the Respondents applied to register trade marks for the Complainant’s logos prior to the date on which the Disputed Domain Names were registered. Moreover, the request by one of the Respondents to become a distributor of the Complainant’s services in Vietnam (notwithstanding that this request was made after the date of registration of the Disputed Domain Names) serves to underscore that the Respondents were well aware of the Complainant’s business and brand when they began using the Disputed Domain Names to promote competing services.

The inference which the Panel draws from this, in the absence of any evidence to the contrary, is that the Respondents selected the Disputed Domain Names because of their similarity with the Complainant’s brand and main website with the intention of attracting, for commercial gain, Internet users to their website by creating a likelihood of confusion with the Complainant’s brand and business.

In light of these findings, the Panel is satisfied that the Respondents have acquired and are using the Disputed Domain Names in bad faith in accordance with paragraph 4(b)(iv) of the Policy. Accordingly, the requirement under paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <pivot-point.biz>, <pivot-point.net> and <pivot–point.info> be transferred to the Complainant.

Charters Macdonald-Brown
Sole Panelist
Dated: May 9, 2011