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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sally Holdings, Inc. v. Pagelifter.com

Case No. D2006-0266

 

1. The Parties

The Complainant is Sally Holdings, Inc., Denton, Texas, United States of America, represented by Roberts, Mlotkowski & Hobbes, P.C., United States of America.

The Respondent is Pagelifter.com, Chula Vista, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <sallyguate.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2006. On March 3, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On March 6, 2006, Network Solutions, LLC 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.

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”).

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 March 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on April 10, 2006.

The Center appointed Ms. Lynda M. Braun as the Sole Panelist (hereinafter the “Panel”) in this matter on May 4, 2006. 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 Sally Holdings, Inc., a company incorporated under the laws of Delaware with a principal place of business in Denton, Texas, is a beauty supply distributor. The Complainant also operates retail stores and provides educational classes, publication, shows, videos and training programs for salon professionals.

The Complainant owns a controlling interest in both Sally Beauty International Inc. and Beauty Holding Company, Inc. (the “Complainants”). The Complainant’s interest in these companies makes it the beneficial owner of the trademarks that form the basis of this complaint.

The Complainants own almost 100 trademark registrations and applications for the mark SALLY, SALLY BEAUTY, SALLY BEAUTY SUPPLY and other marks (“SALLY” marks), including the following trademark registrations for SALLY that are in full force and effect:

Country

Reg. No.

Reg. Date.

United States

1763527

April 6, 1973

Argentina

1763836

November 24, 1999

Colombia

216702

March 17, 1999

Peru

016556

December 28, 1998

Peru

016555

December 28, 1998

The Respondent is Pagelifter.com with a listed address, according to the WHOIS database, in Chula Vista, California. The Respondent registered the disputed domain name <sallyguate.com> with Network Solutions, LLC on November 12, 2001. The Respondent uses the disputed domain name <sallyguate.com> to offer beauty supply products under the name “Sally Beauty Shop” in Guatemala.

 

5. Parties’ Contentions

A. Complainant

The following are the allegations made by the Complainants in this proceeding:

The Complainants have registered and applied to register the SALLY marks in the United States and throughout the world, including in Central and South America.

The Complainants have promoted the SALLY marks globally through advertising and its 2,800 beauty supply stores in the United States, Canada, Europe, and Asia, and the Complainants’ SALLY marks have widespread recognition throughout the world and are associated with the reputable goods provided by Complainants.

The Complainants and their predecessors in interest have continuously used the SALLY marks to advertise and promote their products and stores since 1964.

The Complainants had sales in excess of $1.8 billion (U.S.) in fiscal year 2003, are the #1 professional beauty supply distributor, and spend large sums of money on promoting and advertising their marks.

The Complainants’ website <sallybeauty.com> is accessible throughout the world, including in Guatemala.

Several magazines, including Modern Bride, Heart and Soul, Black Elegance, and Teen People, have favorably referenced SALLY BEAUTY.

The Complainants’ SALLY marks have fame and recognition by a wide spectrum of members of the public.

The Complainants routinely monitor impermissible uses of the SALLY marks and actively enforce their rights against those who infringe on their rights.

The Respondent’s disputed domain name <sallyguate.com> is very similar to their SALLY marks and the only difference is the addition of “guate” and the gTLD.

The addition of the geographic description “guate,” a common abbreviation for “Guatemala” or “Guatemalan,” does not allow the Respondent to escape from a finding of confusing similarity.

The Respondent registered the disputed domain name <sallyguate.com> to: (1) profit from the sale of the domain name to Complainants; (2) profit from the sale of the domain name to a competitor of the Complainants; (3) divert customers away from Complainants by developing a website using Complainants’ SALLY marks; and (4) prevent Complainants from registering the domain name for their own business.

The Respondent is using the Complainants’ good will in its SALLY marks to offer services in beauty care and divert customers from the Complainants and cause confusion in the marketplace as to source, sponsorship, affiliation and endorsement of beauty-related products.

The Respondent had at least constructive knowledge of the SALLY marks, if not actual knowledge, based on the worldwide recognition of the SALLY marks.

The Respondent registered the disputed domain name <sallyguate.com> knowing that it was not the lawful owner of the trademark on which the domain name is based.

The use of the disputed domain name <sallyguate.com> was not arbitrary and Respondent uses the same red color scheme and the same name, SALLY BEAUTY, for the same services as the Complainants for inappropriate reasons and in order to profit from the Complainants’ good will.

The Respondent is using the disputed domain name <sallyguate.com> in bad faith with no legitimate rights in the domain name in violation of its domain name registration agreement.

The Complainants have filed opposition proceedings in Guatemala to the SALLY BEAUTY SUPPLIES and Design trademark applications on February 10, 2006.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

 

6. Discussion and Findings

In order for the Complainants to prevail and have the disputed domain name transferred to the Complainants, the Complainants must prove the following (the Policy, paragraph 4(a)(i-iii)):

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) the Respondent has no right or legitimate interest in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <sallyguate.com> is nearly identical, or if not identical, is confusingly similar to Complainants’ SALLY marks. The addition of the abbreviation “guate,” to refer to Guatemala, in the disputed domain name is not sufficient to escape the finding of similarity. Indeed, it is well-established that the addition of a geographic designation to another’s trademark in a domain name does nothing to change an otherwise identical or confusingly similar domain name. See Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601 (use of the “well-known trademark ‘VOLVO’ in the registered domain name is sufficient, despite the addition of the geographic term, to find the domain name confusingly similar to the Complainant’s trademark”); Harrods Limited v. John Griffin, WIPO Case No. D2002-0641 (“The only difference between the disputed domain names and the HARRODS trademarks is the addition of the geographic designation “usa” to the HARRODS name. The geographic designation “usa” adds nothing distinctive, and the emphasis remains on the name HARRODS to attract the attention of internet users.”). Here, the distinctive part of the disputed domain name is “SALLY,” which is identical to Complainants’ SALLY marks.

Although more relevant under the third element, the Panel notes that the website itself is confusingly similar to Complainants’ website <sallybeauty.com>. The Respondent uses the same red color scheme and tabs at the top of the page as does Complainants’ website. The Respondent also uses the name “Sally Beauty Shop” on its website, which encompasses Complainants’ SALLY and SALLY BEAUTY trademarks. Interestingly, “Sally Beauty Shop” is the only part of the website that is in English, with the remainder of the website being in Spanish. Respondent’s use of a similar website design and name similar to the Complainants’ further enhances the association and confusion with Complainants’ SALLY marks.

Accordingly, the first element of Paragraph 4(a) of the Policy has been met by the Complainants.

B. Rights or Legitimate Interests

Once a complainant establishes that a respondent’s domain name is identical or confusingly similar to a complainant’s mark, and that the complainant has not authorized the respondent to use the mark, the burden shifts to the respondent to establish some right or legitimate interest in respect of the domain name. Sony Kabushiki Kaisha a/t/a Sony Corporation v. Sony.net, WIPO Case No. D2000-1074.

The Respondent appears to have a legitimate business, although it has not come forward with any more proof than what can be concluded based on its website. However, the proper inquiry is not whether the Respondent has a legitimate business, but whether the Respondent has a legitimate right or interest in using the disputed domain name <sallyguate.com>. See International Data Group, Inc. v. K McGovern, WIPO Case No. D2005-0960 (focus should be on whether respondent “has a right or legitimate interest in the domain name itself; thus, a respondent might have a legitimate business and yet be obliged to conduct it under a different name from the complainant’s trademark”).

The Respondent’s default notwithstanding, there is no evidence in the record that the Respondent is in any way associated with the Complainants or that the Respondent has other authority or permission to use the Complainants’ SALLY marks. Furthermore, by not submitting a response, the Respondent has failed to invoke any other circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds some right or legitimate interest in the disputed domain name. Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323; see also Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (respondent’s default alone sufficient to conclude that it had no right or legitimate interest in the domain name).

Therefore, the Panel infers that the Respondent is using the disputed domain name to divert consumers searching for the Complainants’ website to its own website by capitalizing on the fame and goodwill of the Complainants. Accordingly, the second element of Paragraph 4(a) of the Policy has been met by the Complainants.

C. Registered and Used in Bad Faith

First, the Respondent’s knowledge of the Complainants’ SALLY marks when the Respondent registered the disputed domain name supports a finding of registration in bad faith. As the undisputed evidence set forth in the Complaint shows that the Complainants own numerous U.S. trademark registrations, as well as trademark registrations in many countries around the world, the Panel infers that the Respondent was well aware of the Complainants’ SALLY marks but chose, in spite of such knowledge, to register the disputed domain name with the intent of causing consumer confusion and financially benefiting from the goodwill inherent in those well known SALLY marks. Such conduct is a demonstration of bad faith. See Fairmont Hotel Management L.P. v. Puts, WIPO Case No. D2001-0431 (finding bad faith because “Complainant’s registered trademark is long-established and widely known and so, in the absence of evidence or even an assertion by the Respondent to the contrary, knowledge of the Complainant’s rights in the trademark can be imputed to the Respondent at the time of registration of the domain names.”).

Second, the Panel infers the Respondent’s bad faith intent from the Respondent’s lack of response to the Complaint. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications. WIPO Case No. D2001-0210.

Third, the undisputed evidence establishes that Complainants’ <sallybeauty.com> website is available around the world, including in Guatemala. The <sallyguate.com> website and Complainants’ website both have SALLY BEAUTY, the same red color scheme, the same tabs at the top of the page, and sell similar products. In addition, the Panel infers that the use of “Sally Beauty Shop” as the only English words on the website was intentional as the only apparent significance of the name, which is not a common name in Spanish, is to copy the Complainants’ SALLY marks. By failing to respond, the Respondent has not come forward with any explanation for why it chose the format of the website or to use “Sally Beauty Shop” as its name. The Panel infers that the similarity in appearance between the <sallyguate.com> website and Complainants’ website and the use of “Sally Beauty Shop” is not arbitrary and a demonstration of bad faith. See Burlington Networks Inc. v. Igor Sashin, WIPO Case No. D2005-1036 (“deceptive imitation” of website is “strong evidence that Respondent well knew of the Complainant and its rights, and sought to obtain some advantage by exploiting them”).

In conclusion, the uncontested evidence in this proceeding more than sufficiently establishes the requisite bad faith elements pursuant to the Policy, paragraph 4(b)(iv). Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainants.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <sallyguate.com>, be transferred to the Complainants.


Lynda M. Braun
Sole Panelist

Dated: May 17, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0266.html

 

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