WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

American International Industries v. Private Registration / Saul Ortiz

Case No. D2018-2898

1. The Parties

Complainant is American International Industries of Commerce, California, United States of America (“United States”) represented by Conkle, Kremer & Engel, United States.

Respondent is Private Registration of Denver, United States / Saul Ortiz of Miami, Florida, United States.

2. The Domain Name and Registrar

The Disputed Domain Name <gigiwax.com> is registered with DotNamed LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2018. On December 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 20, 2018, 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 Complainant on December 26, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 31, 2018.

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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 29, 2019. On January 30, 2019 Respondent sent an email stating: “Hello. Can someone please explain what this is about? I can be reached at 305 582 2111, Thank you, Saul.” Due to a technical problem with one of the email addresses, Respondent was granted additional time to file a response until February 10, 2019. Respondent did not submit any formal response.

The Center appointed Richard W. Page as the sole panelist in this matter on February 15, 2019. 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

Complainant is a California partnership that manufactures and sells various personal care products under numerous registered and common law trademarks. Complainant owns at least three trademarks registered with the United States Patent and Trademark Office (“USPTO”) with various iterations of its “GIGI” brand (the “GIGI Mark”) used in connection with cosmetic waxing and depilatory products: USPTO Registration No 1,293,728 issued on September 11, 1984 for the word mark “GIGI” in International Class 003; USPTO Registration No. 1,654,145 issued on August 20, 1991 for the word mark “GIGI” in Classes 003, 005 and 011; and USPTO Registration No. 1,653,411 issued August 13, 1991 for the word mark “GIGI HONEE” for uses in classes 003 and 011.

Complainant also has numerous international registrations in other jurisdictions. Complainant or its predecessor in interest has used the GIGI Mark for wax and depilatory products since at least 1984. Complainant continues to sell its wax products under the GIGI Mark online through its own website and third-party websites.

Respondent registered the Disputed Domain Name on October 2, 2013 and previously used it to resolve to a website at “www.starpilwax.com” selling competing products.

5. Parties’ Contentions

A. Complainant

Complainant contends that the registrations of the GIGI Mark alone are sufficient to establish rights under the UDRP. Complainant further contends that the Disputed Domain Name incorporates the GIGI Mark in its entirety – adding only the descriptor “wax” which plainly refers to the products identified in the GIGI Mark being sold by Complainant. Complainant argues that the Disputed Domain Name is therefore confusingly similar to the GIGI Mark.

Complainant alleges that there is no evidence that Respondent has used or demonstrated any preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Complainant further alleges that the only apparent use of the Disputed Domain Name has been to redirect Internet users to “www.starpilwax.com” which is the website for one of Complainant’s competitors selling wax and depilatory products.

Complainant avers that Respondent lacks rights and legitimate interests in the Disputed Domain Name where it has no affiliation with Complainant and Respondent is not commonly known by the Disputed Domain Name or by the name “GIGI” or “Gigi wax.” Complainant further avers that Complainant has not licensed or otherwise permitted Respondent to use the GIGI Mark, or to use any domain name incorporating the GIGI Mark, and has not authorized Respondent to sell or offer to sell any of Complainant’s goods in connection with the GIGI Mark.

Complainant asserts that Respondent uses the Disputed Domain Name to redirect Internet users to the Starpil website, which appears to generate revenue for Respondent when those users purchase products from Complainant’s competitors. Complainant further asserts that Respondent has not and cannot demonstrate any legitimate noncommercial or fair use of the Disputed Domain Name.

Complainant concludes that where Respondent selects a domain name which contains a previously registered mark, and the website to which the domain name resolves contains links relating to the goods or services offered under the mark, Respondent has actual notice of Complainant’s trademark rights and bad faith intent may be inferred. Complainant continues that here the selection of the Disputed Domain Name was calculated so that Respondent could divert Internet users searching for Complainant’s GIGI products to Complainant’s competitor’s website.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Respondent is not obliged to participate in this proceeding, but when he fails to do so, asserted facts that are not unreasonable would be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the GIGI Mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has numerous registrations of the GIGI Mark.

Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent has not refuted Complainant’s contention of trademark rights in the GIGI Mark.

Therefore, for purposes of this proceeding the Panel finds that Complainant has enforceable rights in the GIGI Mark.

Complainant further contends that the Disputed Domain Name and confusingly similar to the GIGI Mark pursuant to paragraph 4(a)(i) of the Policy.

Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. Complainant argues that the entirety of the trademark is incorporated into the Disputed Domain Name. Complainant further argues that when a Disputed Domain Name incorporates an entire trademark with only the addition of a common word, in this case “wax,” it is still confusingly similar to the GIGI Mark. See, Hoffmann-LaRoche AG v. P Martin, WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792.

The Panel finds that the domain name incorporates the entirety of the GIGI Mark and that the addition of the word “wax” is not distinctive.

Therefore, Complainant has shown the necessary elements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating he has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the GIGI Mark at issue.

Complainant asserts that Respondent uses the Disputed Domain Name to redirect Internet users to a competitor’s website, which appears to generate revenue for Respondent when those users purchase products from Complainant’s competitors. Complainant further asserts that Respondent has not and cannot demonstrate any legitimate noncommercial or fair use of the Disputed Domain Name.

The Panel finds Complainant has made a prima facie showing that Respondent lacks rights and legitimate interests in the Disputed Domain Name and Respondent has not responded.

Therefore, Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the complainant who is the owner of the GIGI Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the GIGI Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product

Complainant asserts that Respondent selected the Disputed Domain Name which contains the previously- registered GIGI Mark, and that the website to which the Disputed Domain Name resolves contains links relating to the goods or services offered under the GIGI Mark. Under these circumstances, the Panel finds that Respondent had actual notice of the GIGI Mark and bad faith intent may be inferred. Complainant continues that here the selection of the Disputed Domain Name was calculated so that Respondent could divert Internet users searching for Complainant’s GIGI products to Complainant’s competitor’s website.

The Panel finds that Complainant has met the requirements of policy paragraph 4(b)(iv) and, therefore, of paragraph 4(a)(iii).

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 <gigiwax.com> be transferred to the Complainant.

Richard W. Page
Sole Panelist
Date: March 19, 2019