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Arbitration and Mediation Center
HQUK Limited v. Head Quarters
Case No. D2003-0942
1. The Parties
The Complainant is HQUK Limited, Berkley Square, London, United Kingdom of Great Britain and Northern Ireland, represented by Berwin Leighton Paisner Solicitors of London, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Head Quarters, Cheltenham, Gloucestershire, United Kingdom of Great Britain and Northern Ireland, represented by the Waldrons Solicitors of Brierly Hill, West Midlands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <hq-hair.com> (the "Domain Name")
is registered with Tucows Inc.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 26, 2003. On November 27, 2003, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On November 27, 2003, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
3.2 The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").
3.3 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 November 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2003.
3.4 The Respondent did not submit a response by December 18, 2003. Accordingly, the Center notified the Respondent’s default on December 22, 2003.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on December 31, 2003. 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.
3.6 On January 6, 2004, Waldrons, the Respondent’s legal advisers, sent a letter to the Center. In that letter Waldrons explained that separate proceedings had been commenced under the Nominet Dispute Resolution Service in relation the domain name <hq-hair.co.uk>. A response in relation to the Complaint in those proceedings had been forwarded to Nominet UK, and a copy of that response (the "Nominet Response") was enclosed. However, due to "an oversight on [Waldrons] part", they had "failed to notice that there were separate dispute resolution proceedings instigated [under the UDRP]". Waldrons now wanted to review the Complaint and "formulate [its] response" and sought "leave to submit [its] client’s response late".
3.7 On January 8, 2004, and having reviewed the contents of the Respondent’s Solicitors letter, the Panel made an order (Procedural Order No.1) the operative terms of which were as follows:
"(1) The Respondent shall by no later than 5:30 pm GMT on Friday January 16, 2004:
(i) submit any Response that it wishes the Panel to consider in this matter; and
(ii) submit a document setting out its detailed reasons why the Panel should grant an extension of time for submission of a Response and/or why the Panel should consider and take notice of that Response in coming to its decision in this matter.
(2) At the same time as submitting any document in accordance with paragraph (1)(i) of this Order, the Respondent shall forward a hard copy of the same complete with copies of any document annexed thereto direct to the Sole Panelist. Save for the purposes of compliance with this paragraph of this Order, paragraph 8 of the UDRP Rules shall continue to apply.
(3) The Complainant may, if so advised, submit by no later than 5:30 pm GMT on Friday January 23, 2004, a statement limited to the matters set out in any document submitted by the Respondent in accordance with paragraph (1)(ii) of this Order.
(4) The Panel will address in its decision the question of whether it should grant an extension of time for submission of a Response and/or it can and should consider and take notice of any Response submitted by the Respondent.
(5) The Panel hereby postpones issuing a decision in this proceeding until Friday February 6, 2004."
3.8 The Procedural Order also provided as follows:
"The Panel brings paragraph 5(b)(ix) of the UDRP Rules
to the attention of the Respondent. Insofar as the Respondent makes in any Response
any assertion of fact in respect of which it can be reasonably expected that
documentary evidence exists, and no documentary evidence is annexed to the Response
in support of that fact, the Panel may draw an adverse inference therefrom."
3.9 No Response was filed by the Respondent by January 16, 2004, in accordance
with the Procedural Order No.1. Instead, Waldrons unilaterally sent a letter
direct to the Panel dated January 21, 2004. In that letter the Respondent’s
Solicitors thanked the Panel "for the extension of time the [Panel] granted
to [their] client for submission of any response", but stated that due
to "escalating costs" they would not be making any further submissions.
They therefore asked that the Panel "take into account, insofar as it able
to do so in connection with these proceedings, the response that [their client]
made to the domain name <hq-hair.co.uk>".
3.10 On January 27, 2004, solicitors for the Complainant sent a fax to the
Center objecting to the Panel taking into account the contents of the Nominet
Response. However, the Complainant’s solicitors also went to argue that insofar
as the Panel decided that it could take into account the Nominet Response then
"in the interests of fairness" the Panel should take into account
the Complainant’s Reply in those proceedings (a copy of which was enclosed).
Further, the Complainant sought to draw to the attention of the Panel that a
trade mark application relied upon by the Complainant had "now proceeded
to the registration stage".
4. Factual Background
4.1 The Complainant is a private limited company incorporated in the United Kingdom
on June 5, 1997.
4.2 Whilst the Complainant has only been in existence for 6 Ѕ years, the Complainant’s
business was founded in the 1960’s and has operated under the name HQ "for
many years" including since 1991, through an HQ Hair salon in London.
4.3 The Complainant registered the domain name <hqhair.co.uk> on January 19, 1999,
and the domain name <hqhair.com > on October 21, 1999.
4.4 The Complainant launched its Internet brand HQhair in February 1999. "www.hqhair.com"
has become a market leading website for hair and beauty products with a substantial
turnover and is highly regarded within the hair and beauty industry.
4.5 The Complainant has taken an exclusive licence of the rights in relation
to the trademark applications made by its "sister company HQHairdressing
Limited" for the following community trade marks (the "Trade Mark
- "HQHAIR" in classes 26 and 35, No. 2,046,977- application date
January 19, 2001;
- "HQBEAUTY" in class 35, No. 2,782,761- application date July 17,
- "HQ" in classes 35 and 44, No. 2,901,114 - application date October 17, 2002.
4.6 The Respondent registered the Domain Name on April 22, 2002.
5. Procedural Arguments
5.1 It is convenient before setting out the various submissions of the parties,
to deal with the question of whether the Panel should take into account the
Nominet Response and the contents of the Complainant’s letter of January 27,
5.2 In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO
Case No. D2003-0780 and 1099 Pro, Inc. v. Convey Compliance Systems,
Inc., WIPO Case No. D2003-0033 panels have
held that late responses should be disregarded "absent good cause".
5.3 Paragraph 10(c) of the Rules states as follows:
"The Panel shall ensure that the administrative proceeding takes place
with due expedition. It may, at the request of a Party or on its own motion,
extend, in exceptional cases, a period of time fixed by these Rules or by the
5.4 At first sight the requirement under 10(c) of an exceptional case might
appear stricter than the requirement to show good cause, but the Panel doubts
that this is so. To ask a Panel to consider a Response that has been served
late is essentially tantamount to a retrospective request for an extension of
time. Also there seems little point in applying one test for whether an extension
of time should be granted but where that request has been denied and a Response
served late going on to apply a different test as to whether the Response shall
5.5 Further, the comments of the majority of the panelists in 1099 Pro,
Inc. v. Convey Compliance Systems, Inc., WIPO
Case No. D2003-0033 would seem to suggest that panels are now likely to
take a stricter view on whether a party has shown good cause than might have
been the case when the UDRP process was still relatively new.
5.6 How then is the test (whether it be an exceptional case or showing good
cause) to be applied in this case? The reasons given by the Respondent as to
why it failed to serve a Response by December 18, 2003, are, to say the least,
unusual. The Panel is unaware of any case where the failure was due to legal
advisers to the Respondent confusing separate proceedings in relation to separate
domain names under the Policy and the Nominet Dispute Resolution Service. This
was a gross and basic error for which the Respondent’s solicitors accepted responsibility.
It, therefore, looked as if the Panel might have to answer the question whether
the Respondent should be forced to suffer the consequences of the mistakes of
his legal advisers.
5.7 In the event, for reasons that the Panel now set out, a decision on this
issue is not necessary. By means of Procedural Order No.1 the Panel ordered
that the Respondent should put in any response upon which it wished to rely
by January 16, 2004. It did not do so. Instead it sent a letter on January
21, 2004, in the terms described earlier in this decision. The Panel is not
prepared to accept the letter of January 21, 2004, with its reference back to
the Nominet Response enclosed with its letter of January 6, 2004, as a Response
for the purposes of these UDRP proceedings. The reasons for this are as follows:
(a) The letter was procedurally defective as a Response in that it did not
comply with the requirements of paragraph 5 of the Rules. Further it constituted
a unilateral communication with the Panelist contrary to paragraph 8 of the
(b) The arguments put forward to justify reliance upon the Nominet Response
are unpersuasive. The Respondent claimed that the arguments in Nominet Proceedings
and UDRP proceedings are essentially identical. They are not. By way of example,
Nominet requires a Claimant to show either abusive registration or use, whereas
the Policy requires registration and use in bad faith. Perhaps it could be said
that the Panel could work its way through the Nominet Response and take into
account those assertions of fact or arguments that may be relevant to the UDRP
proceedings. However, this asks far too much of the Panel. Essentially, it involves
a Respondent asking the Panel to examine material much of which is not relevant
to the issues before it and then to construct for the Respondent what the Respondent’s
case may be from that material. The Panel is not prepared to do that in this
case. The Respondent may be anxious to avoid costs, but this does not justify
requesting the Panel to act as its unpaid legal advisor.
(c) Even if the letter and the Nominet Response referred to in that letter
could be treated as a response for the purposes of the Policy, no explanation
is given as to why the letter setting out the Respondent’s position was not
served by January 16, 2004, as required by Procedural Order No. 1. Even if the
Respondent’s solicitor’s initial error constituted good cause or an exceptional
case to justify service of a late Response as at January 6, 2004, (the date
of Waldrons' initial letter) no good cause or exceptional case was put forward
to justify the failure to do so by January 16, 2004. To say in this respect
that the Panel was in possession of the Nominet Response prior to January 16,
2004, is no answer here. The Respondent did not ask the Panel to treat this
document as the Response under the Policy until January 21, 2004.
It was merely provided as evidence in connection with Waldrons’ earlier error
and, indeed, on its face did not even relate to the Domain Name.
5.8 It may be that the Respondent considers this to be harsh. The Respondent
was not responsible for Waldrons’ initial mistake nor (the Panel assumes) for
Waldrons’ false assumption that the arguments in Nominet proceedings and UDRP
proceedings are "essentially identical". However, if the Respondent
believes that the timely filing of a properly formulated Response in this matter
would have made any difference to the outcome of this case, this is a matter
for the Respondent to take up directly with its solicitors.
5.9 The Panel should perhaps add for the sake of completeness that even if
it had decided to take into account the Nominet Response, it would have not
have been minded to take into account the reply of the Complaint also served
in the Nominet proceedings. Whilst the assertion by the Complainant that it
should do so "in the interests of fairness" may seem superficially
attractive, it is in the Panel’s view misconceived. These are not Nominet proceedings
and consideration by the Panel of the Nominet Response would have not made them
so. Therefore, in essence the Complainant’s request constituted a request under
the Policy to be allowed to file a supplemental submission. The Panel would
not have been minded to grant that request. In coming to any conclusion on this
issue the Panel takes into account the following comments of the panel in the
Digital Kitchen decision:
"As is by now well-established, the Rules do not provide any right of
reply. Parfums Christian Dior S.A. v. Jadore, WIPO
Case No. D2000-0938 (November 3, 2000). Although supplemental submissions
may be accepted to address new legal developments, see, e.g., Pet Warehouse
v. Pets.Com, Inc., WIPO Case No. D2000-0105
(April 13, 2000), or to rebut unexpected factual assertions, see, e.g., Pacific
Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO
Case No. D2001-0237 (June 11, 2001), they should be allowed sparingly."
5.10 Somewhat different is the Complainant solicitors’ late request that the
Panel take notice of the fact that its client’s CTM application 002046977 (i.e.
HQhair) had "proceeded to the registration stage". However, for reason
that are explained later in this decision, the Panel feels no need to take this
fact into account in coming to its decision. In the circumstances, the Panel
takes no account of this fact.
6. Parties’ Contentions
6.1 The Complainant contends as follows:
Identical or Confusingly Similar to a trade mark in which it has rights
6.2 The Complainant relies upon its exclusive licence in the Trade Mark Applications
and its "rights in the HQ Brand". The Domain Name is confusingly similar
to the Trade Mark Applications, the addition of the hyphen between "hq"
and "hair" being not sufficient to prevent that confusing similarity.
6.3 The logo of the Respondent, shown at the top right hand corner of the Respondent’s
home page is also confusingly similar to "the Complainant’s marks".
No rights or Legitimate interests / Registered and Used in Bad Faith
6.4 The Respondent registered the Domain Name after the Trade Mark Applications
were published and the Complainant had established extensive goodwill in the
"HQhair name". Therefore, the Respondent has no right or legitimate
interest in respect of the Domain Name.
6.5 The distinctive nature of the "hqhair mark", in particular press
coverage at the time the Domain Name was registered, means that the Respondent
must have known of the Trade Marks and the Complainant’s business at the time
of registration of the Domain Name. This evidences bad faith.
6.6 Further, the registration of the Domain Name and using it to point to a
website offering similar services to the Complainant, had the purpose of disrupting
the business of the Complainant by creating a likelihood of confusion with the
Complainant’s business, constituting bad faith.
6.7 Internet users will believe that the Complainant endorses or is in some
way connected with the Respondent. Although the Respondent is using the Domain
Name in respect of offering goods and services, it is not making a legitimate
non-commercial or fair use of the site. The Respondent has chosen the Domain
Name to capture the Complainant’s Internet audience.
6.8 In connection with these assertions the Complainant relies upon the decisions
in NIKE, Inc. v. Khoo Lye, NAF Case No. FA0110000100180, Gorstew Limited
and Unique Vacations, Inc. v. All-Inclusive Vacations, NAF Case No. FA0005000094929
and Travel Services, Inc. v. tour Coop of Puerto Rico, NAF Case
6.9 The Complainant requests that the Administrative Panel issue a decision
that the Domain Name be transferred to the Complainant.
6.10 The Respondent has made no formal substantive reply to the Complainant’s
7. Discussion and Findings
7.1 The Panel has reviewed the Complaint together with its annexures. In light
of this material, the Panel finds as set out below.
7.2 The Panel does not find that there are any exceptional circumstances within
paragraph 5(e) of the Rules so as to prevent this Panel determining the Complaint.
Details of these proceedings have been served in accordance with the relevant
requirements set out in the Rules.
7.3 It is incumbent on the Complainant to make out its case in all respects
under the Rules set out in paragraph 4(a) of the Policy. However, under paragraph
5(e) of the Rules if the Respondent does not submit a response and in the absence
of exceptional circumstances, "the panel shall decide the dispute based
upon the Complaint". Further, under paragraph 14 of the Rules where a party
does not comply with any provision of the Rules, the panel "shall draw
such inferences therefrom as it considers appropriate".
A. Identical or Confusingly Similar
7.4 Under paragraph 4(a)(i) of the Policy, the Complainant must show that the
Domain Name is identical or confusingly similar to a trade mark in which it
7.5 The Complainant relies upon its exclusive licence of three applications
for the registration of the Community trade marks ("CTM"s) "Hqhair",
"HQbeauty" and "HQ". Contrary to the Complainant’s assertion
in the Complaint that the Domain Name was registered after the Trade Mark Applications
were published, it is clear that the last two of these applications were made
after the registration of the Domain Name.
7.6 This raises no less than three separate questions, none of which have a
straight forward answer, i.e.:
(i) Is an exclusive licence of a CTM sufficient rights in a trade mark for
the purposes of paragraph 4(a)(i)?
(ii) Is a CTM application a trade mark for the purposes of paragraph 4(a)(i)?
(iii) Does it make any difference to the answer to question (ii) if the trade
mark was applied for after the date of registration of the Domain Name?
7.7 The question of whether a licence of a trade mark provides sufficient rights
in a trade mark for the purposes of paragraph 4(a)(i) is one that has been considered
in a number of UDRP decisions. These include L'usine Nouvelle v. Halami Philippe
Tropic Telecom WIPO Case, No. D2000-0983,
Lycos Europe N.V. v. RegionCo, WIPO
Case No. D2000-1102, NBA Properties, Inc. v. Adirondack Software
Corporation, WIPO Case No. D2000-1211,
Limco, Inc. and Too, Inc. v. Pat Mintash d/b/a Mintash Enterprises, WIPO
Case No. D2001-0175, and HBP, Inc. v. Front and Center Tickets, Inc.,
WIPO Case No. D2002-0802.
It is difficult to fully reconcile these decisions, but it is noticeable
that where the complainant has shown that it is an exclusive licensee
of the relevant trade marks this has tended to be sufficient.
7.8 Looking at this matter from first principles it is noticeable that the
Policy does not state that the Complainant must be the registered owner of the
trade mark. Rights in the trade mark is sufficient. But what level of
rights short of registered ownership is necessary? What is a trade mark for
the purposes of the Policy may vary from jurisdiction to jurisdiction (see the
comments in relation to this issue by the Panel in Sibyl Avery Jackson v.
Jan Teluck, WIPO Case No. D2002-1180
in the context of unregistered trade marks). It therefore seems to the Panel
that what is sufficient rights in a trade mark may similarly vary dependent
upon the type and nature of the trade mark relied upon.
7.9 Here the relevant marks are CTMs. Article 22(3) of the Community Trade
Marks Regulation (40/94/EEC) provides as follows:
"Without prejudice to the provisions of the licensing contract, the licensee
may bring proceedings for infringement of a community trade mark only if its
proprietor consents thereto. However, the holder of an exclusive licence may
bring such proceedings if the proprietor of the trade mark, after formal notice,
does not bring infringement proceedings within an appropriate period"
7.10 Does the grant of a licence either alone or in conjunction with the rights
afforded by Article 22 grant the licensee sufficient rights for the Policy?
If the rights under Article 22 are significant here, must the licensee also
show that it has been granted the right to pursue infringement claims (or perhaps
by analogy UDRP proceedings) or alternatively that it is an exclusive licensee
who has given "formal notice" to the trade mark owner and that an
"appropriate period" has now passed? It seems not unreasonable to
assume that in this case, given the close connection between the trade mark
application owners and the Complainant (they are described as "sister companies"),
the entity that made the Community Trade Mark Applications has consented to
these UDRP proceedings. However, it is no more than an assumption given that
no claim to this effect has been made by the Complainant.
7.11 As to the question whether a trade mark application is sufficient to constitute
a trade mark for the purposes of the Policy, yet again there is uncertainty.
In Netdoktor A/S v. Jens Nielsen, WIPO
Case No. DBIZ2002-00109 the panel decided that the pending United Kingdom
trade mark application for NETDOCTOR.CO.UK was to be disregarded, on the grounds
that a trade mark application did not give the applicant any trade mark rights
before a trade mark registration is granted. In contrast, in La francaise
des Jeux v. L Welsr, WIPO Case No. D2002-0305,
the Complainant sought to rely on two CTM applications and the Panel held
that the applications for CTMs revealed no obvious grounds for denying the registrations
and as such the trade mark applications were considered sufficient for the purposes
of the Policy.
7.12 Again, looking at this question from first principles, in the United Kingdom,
where a trade mark is registered it is deemed to have been registered from the
date of the filing of the application (see Ss 9(3) and 40(3) of the Trade Marks
Act 1994). Therefore, an applicant for a UK trade mark has rights in that trade
mark from the date of application; albeit rights that are conditional upon a
future event that has retrospective effect. Are these sufficient rights for
the Policy? Similarly, in the case of CTMs, Article 9(3) of the Community Trade
Marks Regulation grants certain rights of compensation from the date of publication
of the CTM if that mark should subsequently be granted.
7.13 However, if these are sufficient trade mark rights for the purposes of
the Policy, how is a panel to decide complaints the validity of which depend
upon whether or not a registration will subsequently occur? So far as trade
mark litigation in the United Kingdom is concerned, the problem is avoided by
section 9(3) of the Trade Marks Act 1994, which expressly provides that no proceedings
can be commenced until the date of registration. Similarly, the Community Trade
Mark Regulation provides that no court may decide upon the merits of a claim
for compensation until the registration is published (Article 9(3)). However,
no equivalent provisions exist in the Policy.
7.14 The approach of the panel to this problem in La francaise des Jeux
appears to have been that in the absence of any argument or obvious
reason why that the applications would not proceed to grant, then it could be
assumed that they would. However, the Panel finds this approach problematic.
Even if a respondent need only show an arguable case that the application will
fail, a panel will still risk being drawn into an argument as to the merits
of the application that it is likely to be ill-placed to deal with.
7.15 Indeed the difficulties and dangers of asking a panel to make a decision
in such a case were illustrated for the Panel when it conducted a cursory online
trade mark registry search in respect of the Trade Mark Applications shortly
prior to issuing this decision. The results of this search suggested that two
of the Trade Mark Applications either had been or were still subject to opposition
proceedings, a fact that had not been alluded to or mentioned in the Complainant’s
7.16 The last question that arises here is that, if an application for a trade
mark is deemed reliable for the purposes of establishing rights in a trade mark
under the Policy, then can an application for a trade mark after the date of
the registration of the domain name also be relied upon? Essentially the question
here becomes no different from that which arises when a complainant relies upon
a registered trade mark that was applied for after the registration of the relevant
domain name. As is discussed in Joe Cole v. Dave Skipper, WIPO
Case No. D2003-0843, there are a number of cases that suggest
that since there is no time restraint in paragraph 4(a)(i) of the Policy
and therefore the fact that the trade mark post dates the registration does
not matter (although it may be highly relevant to the separate question of bad
faith). However, this is not the only possible approach.
7.17 Therefore, the Complaint potentially raises a large number of difficult
questions on the scope of trade mark rights under the Policy. However, it is
not necessary to consider these questions further in this case. Neither is it
necessary for the Panel to consider whether it should take into account the
Complainant’s late submission that CTM application 00204677 has now proceeded
to registration. The reason for this is that it is reasonably clear that the
Complainant does not just rely on the Trade Mark Applications but also on its
common law rights in the "HQhair brand" arising out of its established
extensive goodwill in the HQhair name.
7.18 The phraseology used by the Complainant in its Complaint is somewhat erratic
and inconsistent. On the question of confusing similarity, for example, it refers
only to the "Complainant’s trade marks in annex 2". This is a reference
only to the Trade Mark Applications and not to any common law rights in the
name HQhair. Nevertheless it is clear from statements elsewhere in the Complaint,
that the rights it relies upon are broader than just rights in the Trade Mark
Applications. In particular the Complaint makes clear that the "Complainant
has rights in the Hqhair brand".
7.19 It is now clear under the Policy that "common law rights" suffice
for the purposes of establishing the relevant trademark rights of the Complainant
pursuant to paragraph 4(a)(i) of the Policy. The Panel refers in this respect
to the decision in Louis de Bernieres v. Old Barn Studios Limited, WIPO
Case No. D2001-0122 and the decision of this Panel in Sibyl Avery Jackson
v. Jan Teluck, WIPO Case No. D2002-1180.
7.20 Has the Complainant in this case brought sufficient evidence before the
Panel to establish such rights as at the date of registration of the Domain
Name? The Complainant contends that:
(a) the Complainant’s business had been in existence since the 1960s and has
operated an HQ Hair Salon in London since 1991;
(b) it launched its Internet brand HQhair from the site "www.hqhair.com"
in February 1999, and that this site receives "several millions of
hits per month" (although exactly when the website started to achieve interest
of this magnitude is not made clear); and
(c) it has achieved widespread coverage for its HQhair brand and is regularly
featured in articles in both regional and national press.
7.21 None of these assertions are contested by the Respondent. So far as press
coverage is concerned, the Complainant has also submitted evidence in this respect
that includes 24 articles from national newspapers and magazines dated between
December 2001 and April 2002 (including The Daily Express, The Mirror, The Daily
Mail, Hello, Cosmopolitan Hair and Beauty, Company), all of which feature HQhair
7.22 This evidence is sufficient in the Panel’s opinion to show that the Complainant
had sufficient goodwill in the HQhair brand at the time that the Domain Name
was registered on April 22, 2002, to satisfy the requirement of rights in a
trade mark under the Policy.
7.23 The Panel also finds that the Domain Name is either confusingly similar
or identical to the HQhair name. The existence of the ".com" suffix,
the existence of the hyphen between the letters hq and the word hair and the
use of lower case characters in the Domain Name do not in this case serve to
alter this finding.
7.24 Accordingly, the Panel concludes that the Complainant has proved the relevant
elements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
7.25 Under paragraph 4(a)(ii) of the Policy, the Complainant must show that
the Respondent has no rights or legitimate interests in the Domain Name.
7.26 The only direct reference to lack of legitimate interests in the Complaint
is as follows:
"The Respondent should be considered as having no legitimate interest
in respect of the Domain Name because it was registered after the Complainant’s
trade mark applications were published and the Complainant had established goodwill
in the HQhair name."
7.27 This is not good enough. Firstly, as has already been explained earlier
in this decision, the statement appears at least in respect of two of the trade
mark applications to be factually false. Secondly, and more importantly, it
is little more than an assertion of the existence of rights for the purpose
of paragraph 4(a)(i) of the Policy.
7.28 Nevertheless, this statement is then followed by a reference to the Nike,
Inc. v. Khoo Lye decision (NAF Case No. FA01110000100180) from which
it is apparent what really is the Complainant’s case on this issue. In the part
of the Nike decision that deals with the question of the lack of legitimate
rights and interests is to be found the following passage:
"Any use by Respondent of the <niketown.net> domain name, identical
to Complainant's famous mark, would be an opportunistic attempt to attract customers
via Complainant's famous mark. See Nike, Inc. v. B. B. de Boer, WIPO
Case No. D2000-1397 (December 21, 2000) (finding no rights or legitimate
interests where one "would be hard pressed to find a person who may show a right
or legitimate interest" in a domain name containing Complainant's distinct and
famous NIKE trademark)."
7.29 The Complainant has not asserted that "HQhair" is a famous mark,
but certainly does appear to be asserting that the Respondent knew of the brand
prior to registering the Domain Name and that this was an opportunistic attempt
to attract customers via the Complainant’s mark. For the reasons given later
on in the context of the question of bad faith, the Panel accepts that this
is correct. To deal with a domain name in this manner certainly does not provide
a respondent with legitimate rights and interests in that domain name. In the
absence of any admissible assertion of the Respondent that it had legitimate
rights or interests here for some other reason, the Panel holds that paragraph
4(a)(ii) of the Policy is made out by the Complainant.
C. Registered and Used in Bad Faith
7.30 Paragraph 4(a)(iii) of the Policy requires that the Domain Name was registered
by the Respondent, and has been used, in bad faith.
7.31 A non-exclusive list of circumstances constituting evidence of bad faith
for the purposes of paragraph 4(a)(iii) are set out in paragraph 4(b) of the
Policy. They are as follows:
"(i) circumstances indicating that you have registered or you have acquired
the Domain Name primarily for the purposes of selling, renting or otherwise
transferring the Domain Name registration to the Complainant who is the owner
of the trade mark or service mark or to a competitor of that Complainant, for
valuable consideration in excess of your documented out-of-pocket costs directly
to the Domain Name; or
(ii) you have registered the Domain Name in order to prevent the owner of the
trade mark 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 have registered the Domain Name primarily for the purpose of disrupting
the business of a competitor; or
(iv) by using the Domain Name, you have intentionally attempted to attract,
for commercial gain, Internet users to your website 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 your website or location
or of a product or service on your website or location."
7.32 Although the relevant paragraphs in the Policy are not referred to in
the Complaint, it is clear that the Complainant is alleging bad faith under
paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.
7.33 Turing first to paragraph 4(b)(iii), the Complainant contends that by
registering the Domain Name and by pointing customers to a website offering
similar services to the Complainant, the Respondent is disrupting the Complainant’s
business by creating a likelihood of confusion with the Complainant’s business.
The Panel accepts that this may be so. The Panel is also prepared to accept
given the fact that both parties sell hair products that the Respondent is a
competitor of the Complainant. However, the Panel has doubts that the Respondent
registered the Domain Name primarily for the purpose of disrupting the Complainant’s
7.34 This leaves the allegation under paragraph 4(b)(iv) of the Policy. The
Complainant asserts that the Domain Name will mislead Internet users to believe
that the Respondent’s website is affiliated with the Complainant’s HQhair brand
and that "the Respondent has chosen the Domain Name to capture the Complainant’s
Internet audience". It is inherent in this assertion that the Complainant
is alleging that the Respondent had knowledge of the Complainant’s goodwill
in the HQhair name when registering the Domain Name.
7.35 Given that the parties are based in the same country and operate in the
same fields, the relatively unusual nature of the name in question and the degree
of publicity that the Complainant achieved prior to the registration of the
Domain Name, the Panel finds that the Complainant has put forward a prima facie
and credible case to the effect that this the Respondent did have this knowledge
and that this was indeed the Respondent’s intention. The Respondent has but
forward no admissible evidence to the contrary. In the circumstances, the Panel
finds that the circumstances set out in paragraph 4(b)(iv) of the Policy have
been shown by the Complainant.
7.36 In the circumstances, the Panel holds that the requirement of registration
and use of the Domain Name in bad faith set out in paragraph 4(a)(iii) of the
Policy is made out by the Complainant.
8.1 For all the foregoing reasons, the Panel finds that the Complainant has
sufficiently proved that:
(i) the Domain Name is confusingly similar to a trade mark in which the Complainant
(ii) the Respondent does not have any rights to or legitimate interest in the
Domain Name; and
(iii) the Domain Name was registered and has been used in bad faith.
8.2 Therefore, in accordance with Paragraphs 4(i) of the Policy and 15 of the
Rules, the Panel orders that the Domain Name <hq-hair.com> be transferred
to the Complainant.
Matthew S. Harris
Dated: February 5th, 2004