WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Daimon Barber Limited v. Domain Privacy Service FBO Registrant / Kenneth Lyerly
Case No. D2017-0773
1. The Parties
The Complainant is The Daimon Barber Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by N.I. Jacobs & Associates, United States of America ("United States").
The Respondent is Domain Privacy Service FBO Registrant of Orem, Utah, United States / Kenneth Lyerly of Orange, California, United States.
2. The Domain Name and Registrar
The disputed domain name <daimonbarber.com> is registered with FastDomain, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 17, 2017. On April 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 26, 2017.
The Center appointed Alistair Payne as the sole panelist in this matter on June 6, 2017. 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 operates a men's barber's business in the United Kingdom. It commenced operation in 2011 and subsequently has developed the business into distributing a range of luxury quality hair pomades, shaving, skincare and fragrance products around the world. These products are sold under the DAIMON BARBER mark which the Complainant has registered in numerous countries including the United States under registration number 5020365, registered on August 16, 2016, with a filing date of July 7, 2015 and a first use in commerce date of October 30, 2013. The Complainant has also registered THE DAIMON BARBER as a European Union Trade Mark under registration number 14354252, registered on November 2, 2015, with a filing date of July 13, 2015. The Complainant operates a website from the <daimonbarber.co.uk> domain name.
The disputed domain name was registered on May 20, 2014. At the time of this decision, the website resolves to a pay-per-click page with links to the Complainant and its competitors.
5. Parties' Contentions
The Complainant submits that the disputed domain name is identical to its registered trade mark, DAIMON BARBER. It says further that a reasonable consumer would be misled to believe that the website at the disputed domain name is the website for the Complainant's products. The likelihood of confusion, says the Complainant is only increased by the fact that the Complainant owns the domain name <daimonbarber.co.uk>.
The Complainant submits that it has not authorised or licensed the Respondent to use its DAIMON BARBER mark nor to register and use the disputed domain name. As far as the Complainant is aware the Respondent has not demonstrated any intention of using the disputed domain name for its own legitimate purpose and it follows according to the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent directs the website at the disputed domain name to a direct competitor of the Complainant. It says that the Respondent has stated that he forwards the disputed domain name to a competitor's website which offers a competing product.
It says that the Respondent has attempted to pressure the Complainant into paying an exorbitant sum in exchange for the disputed domain name and that the Respondent has admitted to buying and selling domain names on a large scale and on a regular basis. The Complainant notes that the Respondent was the first to reach out to the Complainant asking for money in exchange for a release of the disputed domain name and that it had offered to pay a small fee which the Respondent rejected. Overall, the Complainant says that the Respondent purchased the disputed domain name in bad faith and has never used it legitimately other than asking for money from the Complainant in exchange for the domain name transfer.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns a trade mark registration for DAIMON BARBER in the United States under registration number 5020365 with a filing date of July 7, 2015 and a first use in commerce date of October 30, 2013. It also owns a European Union trade mark registration for THE DAIMON BARBER under registration number 14354252 with a filing date of July 13, 2015.
The DAIMON BARBER mark is wholly contained in the disputed domain name and there is no distinguishing element to the left of the generic Top-Level Domain ("gTLD") ".com". Consistent with previous UDRP panel decisions, the Panel therefore finds that the disputed domain name is identical to the Complainant's United States trade mark registration and confusingly similar to its European Union trade mark registration. Accordingly, the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has submitted that it has not authorised or licensed the Respondent to use its DAIMON BARBER mark nor to register and use the disputed domain name. The Complainant says that the Respondent has not demonstrated any intention of using the disputed domain name for its own legitimate purpose and it follows according to the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name. In addition, the Panel notes that the Respondent has directed the disputed domain name to a competitor's website and as further discussed below has confirmed this fact in writing to the Complainant.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. As further discussed below in Section C, the Respondent's conduct in seeking to register a corresponding domain name to a distinctive brand registered as a domain name and then to redirect that domain name to a competitor's website in order to "up the ante" in encouraging the original registrant to pay a higher price for the domain name registered by the Respondent is not a legitimate practice and is exactly the sort of illegitimate cybersquatting conduct proscribed by the Policy.
As a result, the Panel finds that the Respondent has not conducted itself legitimately and has not rebutted the prima facie case made out by the Complainant. The Complaint therefore also succeeds under this element of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered by the Respondent on May 20, 2014. In attempting to sell the disputed domain name to the Complainant, the Respondent admitted in pre-proceeding email correspondence, submitted in evidence by the Complainant, that he had registered the disputed domain name with knowledge of the Complainant's business and of its use of THE DAIMON BARBER mark.
The Respondent advised the Complainant in his initial email communication that having built a website for one of the Complainant's competitors he had then looked at domain names relevant to the products sold from that website. He noted that typically if he saw domain names like <thedaimonbarber.com>, he would then check for the availability of domain names, for example, like the disputed domain name and would acquire them if they were available. He noted that his practice was then to point them towards the brand on the larger site that he had just built which, to use his words, "was an up-selling point for his client". The Respondent then noted that "often times someone like yourself will reach out with an offer to purchase the domain from me that I just cannot refuse".
The dominant DAIMON element of the Complainant's marks, DAIMON BARBER and THE DAIMON BARBER is distinctive. The Respondent might in certain circumstances be able to get away with this practice in relation to commonly used words or terms but where marks with distinctive elements are concerned and where there is evidence (as in this case by the Respondent's own admission) that the Complainant has been targeted and that the Respondent has then sought to use the re-directed disputed domain as "an up-selling point" for their client then this amounts to registration and use of the disputed domain name in bad faith.
In addition, this Panel notes that the Complainant started its business in 2011 and the first use in commerce date of its United States trademark is October 2013.
Further, the Respondent's footnote that people may then happen to make him an offer that he just cannot refuse, coupled with the evidence of his conduct in this case of seeking proactively to sell the disputed domain name to the Complainant at a considerable profit, supports the inference that the Respondent registered the disputed domain name for re-sale to the Complainant. The Panel notes that based on the Respondent's own email comments, it appears that this is not an unusual practice. If so, then the Panel notes that the requirements of paragraph 4(a)(iii) of the Policy are fulfilled which is additional evidence of registration and use of the disputed domain name in bad faith.
Accordingly, the Panel finds on balance that the disputed domain name has been registered and used in bad faith and the Complaint succeeds under the third element 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 <daimonbarber.com> be transferred to the Complainant.
Date: June 16, 2017