WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Serge Normant v. Bruce Kushnick Case No. D2008-1364 1. The Parties
Complainant is Serge Normant, Atlanta, Georgia, United States of America.
Respondent is Bruce Kushnick, New York, New York, United States of America 2. The Domain Name and Registrar
The disputed domain name, , is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2008. On September 9, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On the same date, GoD, Inc. 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”), 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 Respondent of the Complaint, and the proceedings commenced on September 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 8, 2008.
The Center appointed M. Scott Donahey as the sole panelist in this matter on October 14, 2008. 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 well-known hairstylist, who has published two books. The first, published in 2001, examines hairstyling throughout the 20th Century and the second, published in 2004, deals with transformational hairstyling of famous actresses and models. Complainant began his career in Paris, thereafter moving to New York, where he currently lives and works.
Complainant has worked with a wide range of advertising clients including Chanel, Estée Lauder, L'Oreal, Lancome, Ralph Lauren, Gucci, Yves Saint Laurent, and many more. He also works regularly with celebrities who are frequent subjects of People magazine articles, such as Gwyneth Paltrow, Julia Roberts, Sarah Jessica Parker, Hilary Swank, Heather Locklear, and many more. Complaint, Annex E.
Articles about Complainant and his work have appeared in Allure, August 2006 edition, Glamour, January 2007 edition, NY Magazine, June 4, 2007 edition, and Glamour, September 2008 edition. Id.
Complainant has registered the mark SERGE NORMANT with the United States Patent and Trademark Office (“USPTO”) in connection with hair salon services and providing information regarding hair care and hairstyling via the Internet. The registration was applied for on June 8, 2004, the registration issued on December 25, 2007, and it shows a first use in commerce in September 2003. Complaint, Annex D. Complainant has been using the Internet to advertise and promote his hair stylist services. Complaint, Annex E. Complainant has extensively advertised, promoted, and marketed his hair stylist services throughout the United States of America.
Respondent is not affiliated, associated, or connected to Complainant in any way and has not been authorized to use the SERGE NORMANT service mark.
Respondent registered the domain name at issue on November 14, 2007. Complaint, Annex A. Respondent is a resident of New York, where he is engaged in the business of hair styling and make up Id, and Complaint, Annex J. Until contacted by Complainant, Respondent used the domain name at issue to link to Respondent's web site “” at which Respondent promoted his competing hair styling and make up business. Complaint, Annex J.
Complainant's agent originally contacted Respondent on February 29, 2008. In the letter attached to an email, Complainant demanded that Respondent cease using the domain name at issue to redirect users to Respondent's web site and to transfer the domain name to Complainant, the mark holder. Complaint, Annex H.
In response to this letter, Respondent ceased using the domain name to link to Respondent's web site, and stated that he was willing to sell the domain name at issue to Complainant. Complaint, Annex I. In response, Complainant offered Respondent $250 and provided him with an agreement to transfer document. Id.
Respondent rejected this offer and thereafter began using the domain name at issue to resolve to a parking site which featured links to various clothing retailers. Complaint, Annex L. 5. Parties' Contentions A. Complainant
Complainant contends that the domain name at issue is identical or confusingly similar to the SERGE NORMANT service mark in which Complainant has both common law and registered rights, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith. B. Respondent
Respondent did not reply to 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 in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2 that the Respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well settled that an individual who uses his name in connection with his business or profession in a commercial manner can acquire common law trademark or service mark rights in a domain name. Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210 (); Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service,WIPO Case No. D2004-0108 (); Barry Diller v. Internetco Corp,WIPO Case No. D2000-1734. It is undisputed that Complainant's registration did not issue until a month after Respondent registered the domain name at issue. But the facts of this case indicate that Respondent almost assuredly knew of the good will of the Complainant's service mark, even if Respondent could not have said that he understood the law of common law marks.
Complainant had begun using his name as a service mark in September 2003, more than four years before Respondent registered the domain name at issue. Years before Respondent registered the domain name at issue, Complainant had published two books on the subject of hair styling.
Respondent was a resident of New York and did business as a hair stylist and make up artist in New York. Complainant was a resident of New York and did business as a hairstylist in New York. In the year before Respondent registered the domain name at issue three articles had appeared in publications that are said to be “must reads” for people in the beauty business. Respondent was attempting to attract the same clientele that Complainant serviced. Complaint, Annex J. At the time that Respondent registered the domain name at issue it is clear that Complainant had common law trademark rights in at least the city of New York.
The domain name at issue is identical to Complainant's mark, with the exception of the gTLD suffix, “.com”. It has long been held that the mere addition of a gTLD suffix is not significant in determining whether a domain name is identical to a mark. Credit Management Solutions, Inc. v. Collex Resource Management,WIPO Case No. D2000-0029. Accordingly, the panel finds that the domain name at issue is identical to a mark in which Complainant has rights. B. Rights or Legitimate Interests
The consensus view of WIPO UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name, nor has Complainant granted Respondent a license, permission, or authorization to use its SERGE NORMANT service mark. These allegations are unrebutted by Respondent. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue. C. Registered and Used in Bad Faith
At the time of the filing of the Complaint, Respondent was using the domain name at issue to link to Respondent's web site where Respondent was offering services directly competitive of those offered by Complainant. The Panel finds that in light of the above discussions this constitutes bad faith registration and use under paragraphs 4(b)(iii) and (iv) of the Policy. 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, , be transferred to Complainant.
M. Scott Donahey
Sole Panelist
Dated: October 17, 2008
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