WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

John Barrett, Inc. v. Private Whois Service

Case No. D2011-1103

1. The Parties

The Complainant is John Barrett, Inc. of New York, United States of America, represented by Davis & Gilbert LLP, United States of America.

The Respondent is Private Whois Service of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <johnbarrettsalon.net> is registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2011. On June 30, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On July 6, 2011, Internet.bs Corp. 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 July 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2011.

The Center appointed David Perkins as the sole panelist in this matter on August 4, 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.

4. Factual Background

4.A. The Complainant

4.A.1 The Complainant operates the John Barrett Salon, which maintains a prominent and well-known location in the world-famous Bergdorf Goodman store on 5^th Avenue, New York. The salon was launched in 1996 and is a destination for celebrities and glamorous customers for hair styling services. The Complainant also sells products bearing the name “John Barrett Salon” including shampoos, hair sprays, styling gels and conditioners.

4.A.2 The Complainant is the proprietor of the following registered trademarks:

4.A.3 The Complainant also operates a website featuring its services and products at “www.johnbarrett.com”.

4.B. The Respondent

4.B.1 In the absence of a Response, the only information relating to the Respondent is that which appears from the Complaint.

4.B.2 The disputed domain name <johnbarrettsalon.net> was registered on February 22, 2011 and is now under the name of a privacy service.

4.B.3 Exhibited to the Complaint is a screen shot of the website to which the disputed domain name resolves. The website features twin actresses, Mary Kate and Ashley Olsen, depicted at the Complainant’s “John Barrett Salon” and offers digitally printed photographs of them for USD 199.99. It also depicts a Dr Jacob Mendez, captioned “Meet the Expert”. The text reads:

“Hi, Dr Jacob Mendez here.

After retiring about a year ago, I created this website to help consumers make informed buying decisions.

Feel free to compare prices, check ratings and read product reviews before you buy. You can also use the Contact Us page should you have any questions.

Enjoy your stay!”

5. Parties’ Contentions

5.A. Complainant

Identical or Confusingly Similar

5.A.1 The Complainant’s case is that the disputed domain name not only incorporates its registered trademark, JOHN BARRETT, in its entirety but also the Complainant’s trading style “John Barrett Salon”.

Rights or Legitimate Interests

5.A.2 The Complainant has neither licensed nor otherwise authorised the Respondent to use the JOHN BARRETT trademark.

5.A.3 Further, the Respondent’s unauthorised use of the disputed domain name is clearly designed to make use for its own commercial gain of the Complainant’s trademark and the market and reputation the Complainant has established under that trademark over the past 15 years.

Registered and Used in Bad Faith

5.A.4 The Complainant asserts that the Respondent’s use of the disputed domain name falls within paragraph 4(b)(iv) of the Policy. Although the website to which the disputed domain name resolves purports to provide information about the Complainant’s John Barrett Salon, in reality it is merely a collection of affiliated marketing links from which the Respondent profits by making unauthorised use of the JOHN BARRETT trademark.

5.A.5 The Complainant equates the Respondent’s bad faith use of the JOHN BARRETT trademark to typosquatting of the type held to constitute bad faith registration and use under the Policy. In that respect, the Complainant cites three decisions under the Policy.

5.A.6 First, Pfizer, Inc., A Delaware Corporation v. Phizer’s Antiques and Robert Phizer, WIPO Case No. D2002-0410. In that case, the disputed domain name <phizer.com>, resolved to a website which directed Internet users to the respondent’s travel site at <sunfinders.com>. Held, that this constituted bad faith registration and use.

5.A.7 Second, Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775. The disputed domain names <wochovia.com>, <wachvia.com> and <wachovai.com> resolved to a pornographic website at <hanky-panky-college.com>. Held, this constituted bad faith registration and use.

5.A.8 Third, e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies, WIPO Case No. D2000-1369. The complainant operated a credit card services under the E-DUCTION trademark. Employers used the complainant’s credit card services to provide employee benefits, whereby employees could pay for purchases, credit free, through deductions from future pay checks. The disputed domain name <eduction.com> resolved to a website which provided links to other sites and credit card companies. Held, such use constituted bad faith use. However, the complaint failed since the disputed domain name had been registered before the complainant’s E-DUCTION trademark, so that registration in bad faith could not be established.

5.B. Respondent

As noted, no Response has been filed.

6. Discussion and Findings

6.1 The Policy, paragraph 4(a), provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding

(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

6.2 The Policy, paragraph 4(c), sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

6.3 The Policy, paragraph 4(b), sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraphs 4(b) and (c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The Complainant has established registered trademark rights in the JOHN BARRETT mark. It has also established trademark rights in the trading style “John Barrett Salon” under which its New York salon operates and its hair products are sold.

6.6 The disputed domain name incorporates that trademark in its entirety with addition to the suffix “salon”. In the circumstances, the disputed domain name is clearly confusingly similar to the Complainant’s JOHN BARRETT trademark and the requirements of paragraph 4(a)(i) of the Policy are met.

Rights or Legitimate Interests

6.7 In the Panel’s view, in the absence of any license or other authorisation from the Complainant to use the JOHN BARRETT trademark the Respondent can have no rights to or legitimate interests in the disputed domain name.

6.8 Further, the Respondent’s use of the disputed domain name outlined in paragraph 4.B.3 above is clearly neither a noncommercial nor a fair use of that domain name and is calculated to misleadingly divert consumers.

6.9 Accordingly, the Complaint satisfies the requirement of paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

6.10 The Respondent’s use of the disputed domain name, as described in paragraph 4.B.3 above, is equally clearly an intentional attempt by the Respondent to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s JOHN BARRETT and JOHN BARRETT SALON marks as to the source, sponsorship or affiliation of that website. As such, it constitutes evidence of the registration and use of the disputed domain name in bad faith under paragraph 4(b)(iv) of the policy.

6.11 Accordingly, the Complaint satisfies the requirement of paragraph 4(a)(iii) of the Policy.

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 disputed domain name, <johnbarrettsalon.net> be transferred to the Complainant.

David Perkins
Sole Panelist
Dated: August 9, 2011