WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beauty Elements Corp. v. Patrick Ory / Domains By Proxy, LLC
Case No. D2015-1589
1. The Parties
The Complainant is Beauty Elements Corp., Hialeah, Florida, United States of America, represented by Patel & Almeida. P.C., United States of America.
The Respondent is Patrick Ory of Egmond-Binnen, Netherlands / Domains By Proxy, LLC of Scottsdale, Arizona United States of America.
2. The Domain Name and Registrar
The disputed domain name <sopranohair.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2015. On September 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2015, the Registrar 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. The Center sent an email communication to the Complainant on September 11, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 11, 2015.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2015.
The Center appointed Dawn Osborne as the sole panelist in this matter on October 16, 2015. 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 is one of the world’s leading producers of human and synthetic hair extensions and has sold SOPRANO hair extensions and wigs around the world since 2006. It has registered trade marks for SOPRANO for these goods around the world including the European Union where the Respondent is based. The Complainant first registered its SOPRANO mark in 2010. It also owns the registered trade mark BIJOUX and device in the United States of America for wigs and hairpieces.
The Domain Name was registered in 2011.
The Domain Name is being used for SOPRANO hair extensions that the Complainant has identified as counterfeit. The site attached to the Domain Name also uses the expression “by Bijoux”.
5. Parties’ Contentions
The Complainant’s submissions can be summarised as follows:
The Complainant is one of the world’s leading producers of human and synthetic hair extensions and has sold SOPRANO hair extensions and wigs around the world since 2006. It has registered trade marks for SOPRANO for these goods around the world including the European Union where the Respondent is based.
The Domain Name registered in 2011 replicates the Complainant’s trade mark SOPRANO and couples it with the word “hair”.
The Respondent operates a web site dedicated to the sale of counterfeit SOPRANO products. Such actions cannot be a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Respondent is not commonly known by “Soprano” and has no trade mark rights in the name.
The Respondent has registered and is using the Domain Name in bad faith to divert Complainant’s customers to the Respondent’s competing site where the Respondent benefits commercially from the sale of counterfeit SOPRANO hair extensions. The Respondent claims that its extensions are “by Bijoux”. BIJOUX is another registered trade mark owned by the Complainant with a device registered in the United States of America. The use shows the Respondent’s actual knowledge of the Complainant and its business.
Internet users may become confused as to the Complainant’s affiliation with the web site at the Domain Name due to the confusingly similarity of the Domain Name to the SOPRANO mark and counterfeit hair extensions offered on the site. Accordingly the Respondent is intentionally attracting Internet users to its web site by creating a likelihood of confusion with the Complainant’s trade marks as to the source or affiliation of the Respondent’s web site.
The Complainant’s rights in SOPRANO long predate the Respondent’s registration of the Domain Name in 2011 as the Complainant first sold its goods in 2006 and first registered its mark in 2010.
The Respondent used a privacy service which is a further indication of registration and use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name consists of the Complainant’s mark SOPRANO (which is registered for hair related products) and the generic word “hair”. The addition of the generic word, hair, connected to the business that the Complainant is in, does not serve to distinguish the Domain Name from the Complainant’s SOPRANO trade mark. In fact, the addition of the word “hair” is likely to cause additional confusion as the Complainant is known in the field of business of wigs and hair extensions. As such the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests
The Respondent has not filed a Response and does not appear to have any trade marks associated with the name “Soprano”. There is no evidence that it is commonly known by this name and it does not have any consent from the Complainant to use this name. Use of the Domain Name to sell counterfeit goods using the trade marks of the producer of the genuine goods cannot be a bona fide offering of goods or a legitimate non commercial or fair use. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including where there are circumstances where, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location. The Respondent has not responded to the Complainant’s contentions that it is using the Domain Name and another of the Complainant’s registered trade marks BIJOUX on its web site attached to the Domain Name to offer counterfeit Soprano hair extensions. The Panel finds that the Respondent has attempted to attract and cause confusion amongst Internet users between the Complainant’s marks and its goods and the goods offered by the Respondent on the web site attached to the Domain Name for commercial gain. As such the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(b)(iv) of the Policy.
For 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 <sopranohair.com> be transferred to the Complainant.
Date: October 18, 2015