WIPO Domain Name Decision D2007-1020 for anthony-mascolo.com, anthonymascolo.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mr. Anthony Mascolo v. SAL Adams Group

Case No. D2007-1020

1. The Parties

The Complainant is Mr. Anthony Mascolo of London, United Kingdom of Great Britain and Northern Ireland, represented by Glass Law Limited, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Sal Adams, SAL Adams Group of London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrars

The disputed domain names and are registered with Tucows and Schlund + Partner respectively.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2007. On July 17, 2007, the Center transmitted by email to Schlund + Partner and Tucows requests for registrar verification in connection with the domain names at issue. On July 17, 2007, Tucows transmitted by email to the Center its verification response; on July 18, 2007 Schlund + Partner transmitted by email to the Center its verification response, both verification responses confirming that the Respondent is listed as the registrant of the respective domain name and providing the relevant contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on July 19, 2007. 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”), 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 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2007. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent’s default on August 16, 2007.

The Center appointed Isabel Davies as the sole panelist in this matter on August 27, 2007. 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 has provided the registration certificate for a Community Trademark (CTM), ANTHONY MASCOLO, which was applied for on September 9, 2004, and registered on November 28, 2005. The Panel accepts that the Complainant is the registered proprietor of this trademark. The trademark is registered in the following classes of goods and services:

- 3 (Cosmetic or non-medicated preparations for the hair, skin and nails; cosmetics; perfumes, aftershaves);

- 41 (Photography; organisation and production of fashion shows); and

- 44 (Hairdressing; beauty services; beauty salons).

The Complainant has also provided copies of correspondence between the Complainant and the Respondent. The Panel accepts that such correspondence was sent and received. The correspondence includes:

- a letter sent by the Complainant to the Respondent dated May 23, 2007, which requests the transfer of the domain name (the second domain name in dispute, , had not been registered by the Respondent at that time);

- an email sent by the Respondent to the Complainant on May 30, 2007 which claimed that the domain name was to be used for a fan-site. The email suggested that the Complainant should offer a price for the domain name.

- a further email sent by the Respondent to the Complainant on June 2, 2007, which stated that any offer to purchase the domain name must be in excess of �500,000 and which stated:

“We know the value of this domain and the importance of its name to the International Hair & Beauty industry”

- a further email sent by the Respondent to the Complainant on June 21, 2007 which stated:

“I would like to advise you that a period of 5 business working days has been alocated [sic] for your proposal of ANTHONYMASCOLO.COM. If we do not hear back from you with an propsal [sic] offer within this time, we will complete the sale of this domain to the other party.”

- a further email sent by the Respondent to the Complainant on June 25, 2007 which stated:

“As we have previously stated that [sic] the Domain was registered for Fan site use. This Domain has had numerous organisations interested in ourchasing [sic] this. As per your e-mail Mr. Glass, we will continue to proceed with sale.

Once the sale of this domain is complete, we will be using our other domain “ANTHONY-MASCOLO.COM” as our fan site. The third party company is aware of the name of the domain and are also aware that you are wanting this.”

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

- That the domain names and are identical in all material respects to the Complainant’s registered trademark.

- That the Complainant, whose name is also identical to the domain names, is actively involved in the hair industry (and associated goods and services) and has won numerous awards in this area. He has also received entry to the British Hairdressing Hall of Fame.

- That, since 2003, the Complainant has been the International Creative Director of TIGI hair-care and the Creative Director of Toni & Guy USA. The Complainant jointly owns and runs the Toni & Guy and TIGI hair care business with his brothers. The business has an annual turnover of more than US $200m.

- That the Complainant has published an annual hairdressing collection book each year since the mid 1970’s and now also sells a DVD featuring the same content. The Complainant has also published many image books and magazines.

- That the complainant has made many television appearances in the UK, including on The Clothes Show, GMTV, The Big Breakfast and Style Challenge.

- That the Respondent has no rights or legitimate interests in respect of the domain names.

- That, to the best of the Complainant’s knowledge, the Respondent has never used, or prepared to use, the domain names in connection with any bona fide offering of goods and services. The domain names only link to holding pages offered by the registrars of the domain names.

- That the Respondent is in the hair products business and is a competitor of the Complainant, and that the Respondent neither sells any of the Complainant’s own products, nor works with or for any of the Complainant’s salons, and its product or brand is in no way associated with or endorsed by the Complainant or the businesses TIGI and Toni & Guy.

- That the domain names were registered and are being used in bad faith.

- That the Complainant discovered that the Respondent has registered the first domain name, , around the beginning of May 2007.

- That the Respondent operates in the same industry as the Complainant and offers competing products.

- That the Respondent purchased the first domain name, , three months after the Complainant applied for his ANTHONY MASCOLO trademark.

- That the fan site the Respondent asserts is “in development” has not been developed since the domain name was registered, and that it would be a somewhat unusual situation, and unlikely in the extreme, for a competitor to be developing a fan-site of their competition.

- That the fan-site explanation of the Respondent is a classic cyber-squatting excuse to seek to avoid an allegation of bad faith.

- That the Respondent’s request for a sum of �500,000 (five hundred thousand pounds) for transfer of the domain name is an astronomical sum that supports the Complainant’s assertion of bad faith.

- That the bad faith is compounded by the Respondent’s intimation that the Respondent was negotiating with other interested third parties for purchase of the domain name.

- That the most damning indictment of the Respondent’s deliberate attempt to gain unfair commercial benefit from the purchase of the domain names can be found in the Respondent’s June 2, 2007 email, which stated: “we know the value of this domain and the importance of its name to the International Hair & Beauty industry.”

- That the Respondent, quite cynically and extraordinarily in the context of the notice upon which it had been put by the Complainant of the Complainant’s rights to the domain name and its ownership of a registered trademark, registered the second domain name, , on June 14, 2007.

- That the later purchase of the second domain name, in the context of all the communications that had taken place between the parties, is prima facie evidence of bad faith and has been deliberately done in order to further commercially disadvantage the Complainant.

B. Respondent

The Respondent did not provide a formal Response to the Complainant. However, the Respondent did email the Center on July 25, 2007 after receiving the Notice of UDRP Complaint to state the following:

“We appreciate your involvement in this matter. The domain A was purchased as we are to use this as a fan base web site. But, I am sure you already knew this anyway.

Mr. Adams Glass had requested of what price is the domain available for? And we had advised that we had no intensions [sic] of selling this as we had purchased for fan use only. However, their client wanted this and we had provided a sum figure as per their request.”

6. Discussion and Findings

The Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to provide a formal Response is not due to any omission by the Center. The email response from the Respondent to the Center indicates that the Respondent received the Complaint. The Panel therefore finds that, upon receiving the Complaint, the Respondent has deliberately chosen not to provide a formal Response to the Complaint.

Pursuant to Rules paragraphs14(b) and 5(e), the Panel is entitled to draw such inferences from the Respondent’s failure to respond to the Complaint as it considers appropriate and to decide the dispute based upon the contents of the Complaint. As a result, the Panel accepts the facts and circumstances set out in the Complaint as true. (This has been the case in previous UDRP decisions, for example Rita Rudner v. Internetco Corp., WIPO Case No. D2000-0581.)

However, by accepting that the facts and circumstances set out in the Complaint are true, this does not automatically lead to the Panel finding for the Complainant. The Complainant must persuade the Panel that all three of the elements set out in paragraph 4(a) of the Policy are present before an order can be made to transfer the domain names. These elements are:

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

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

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

The Panel’s findings in respect of each element are as follows:

(i) Identical or Confusingly Similar

The Complainant is the registered proprietor of a Community Trademark registration for the name ANTHONY MASCOLO. The trademark was applied for (and is therefore valid from) September 9, 2004. This date precedes the registration of both domain names in dispute.

The Complainant has provided evidence that the Complainant has used the name Anthony Mascolo (his name) in the hair industry for over 40 years. However, the Complainant does not assert unregistered trademark rights or personality rights in the name. Given the existence of a registered trademark, the Panel does not find it necessary to decide this point, although it would appear to the Panel that the Complainant has significant unregistered trademark rights in the Anthony Mascolo name.

The Panel finds that the two domain names, and , are both identical to the Complainant’s trademark ANTHONY MASCOLO. The deletion of the space between the words and the addition of a hyphen and/or “.com” are irrelevant for the purposes of determining whether the domain names are identical to the trademark.

The Panel finds that domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Panel therefore finds that the first element of the Policy has been established.

(ii) Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out several ways in which a respondent may demonstrate rights or legitimate interests:

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

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has provided evidence that the Respondent is a competitor of the Complainant, which the Panel accepts. Any commercial use of the domains name would therefore be likely to infringe the Complainant’s trademark rights. In addition, the Panel has not been presented with any evidence which suggests the Respondent has taken any steps (in two and a half years) to use the domain names for any purpose. The Panel therefore finds that the Respondent has not used or demonstrated that it has made preparations to use either domain name in connection with a bona fide offering of goods or services.

Nothing in the record suggests that the Respondent has been commonly known by either domain name.

The Respondent has asserted that it intends to use the first domain name, for a “fan base web site”. However, the Respondent has provided no evidence which suggests it has used or that it has made any preparations to use the domain name as a fan site. Use of a domain name incorporating a person’s name to establish a fan site has been held by selected WIPO Panels to constitute legitimate non-commercial or fair use of that name. However, there are several factors that persuade the Panel that in this case, a finding of legitimate non-commercial or fair use of Complainant’s trademark is not warranted. These are:

- Paragraph 4(c)(iii) of the Policy refers to “making” a legitimate non-commercial or fair use. The Panel has seen no evidence that the Respondent has made any legitimate non-commercial or fair use of the domain names;

- No evidence has been provided to the Panel that the Respondent has made any preparations to use the domain names as fan sites;

- The only evident use by the Respondent of the disputed domain names has been to offer them for sale to the Complainant, at a substantial price; and

- The Respondent appears to be a competitor of the Complainant and it appears unlikely that a competitor would intend to operate a fan site of its competitor.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain names. The Panel therefore finds that the second element of the Policy has been established.

(iii) Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances may, “in particular but without limitation”, be evidence of bad faith. These include:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor.

In this case, the Respondent appears to have acquired the domain names for the purpose of selling them. The Respondent has asserted in correspondence with the Complainant and with the Center that it intends to use at least one of the domain names for a fan site. However, the Respondent’s other actions contradict this. The Respondent raised the possibility of the Complainant purchasing the domain name and, when asked, suggested a high price of �500,000. The Panel notes that the Respondent’s email to the Center claims that the Complainant asked what price the Respondent would sell the first domain name for, and that the Respondent had informed the Complainant that it had no intention of selling the domain name. From the correspondence provided to the Panel, this does not appear to be correct. In fact, the Respondent first raised the issue of the Complainant purchasing the first domain name, and invited an offer from the Complainant.

The Respondent also indicated that there were other potential buyers interested in the domain name (also competitors of the Complainant) and threatened to sell the domain name to those buyers. The Panel therefore infers from this that the Respondent obtained the domain names in order to attempt to sell them to either the Complainant or a competitor of the Complainant.

The Panel has not been provided with evidence that the Respondent has obtained the domain name for the purpose of disrupting the business of a competitor. However, a logical conclusion to draw from the Respondent’s actions in registering two domain names which feature a trademark registered by a competitor would be that either the Respondent intended to trade off the reputation of the Complainant or to prevent the Complainant from obtaining the domain names.

Paragraph 4(b) of the Policy provides examples of actions which are evidence of bad faith. The Panel finds that the following actions of the Respondent are evidence that the domain names have been registered and used in bad faith:

- The Respondent attempted to pressure the Complainant to purchase the domain names by threatening to sell the domain name, , to a competitor of the Complainant;

- The Respondent registered the second domain name, , after it received a cease and desist letter (dated May 23, 2007) from the Complainant’s solicitors – it was therefore on notice of the Complainant’s rights at that time;

- The Respondent registered the first domain name after the Complainant applied for his trademark ANTHONY MASCOLO, a name which the Respondent would have been aware of in any event as a result of its activities in the hair care industry; and

- The Respondent does not appear to have used the first domain name to date for any purpose other than to attempt to sell it to the Complainant for a significant amount of money.

The Panel finds that the Respondent has acted in bad faith with respect to the domain names. The Panel therefore finds that the third element of the Policy has been established.

For the reasons above, the Complainant has established all of the elements necessary for the Panel to find that the Respondent has engaged in abusive domain name registration. The Panel therefore orders that the domain names be transferred to the Complainant.

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 names, and be transferred to the Complainant.

Isabel Davies
Sole Panelist

Dated: September 10, 2007

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