WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Alberto-Culver International, Inc. v. Trademark Management Case No. D2008-1439 1. The Parties
The Complainant is Alberto-Culver International, Inc., Illinois, United States of America, represented by Latimer, Mayberry & Matthews IP Law LP, United States of America.
The Respondent is Trademark Management, New York, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Dotster, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2008. On September 23, 2008, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On September 23, 2008, Dotster, 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 the Respondent of the Complaint, and the proceedings commenced on September 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 21, 2008.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on November 10, 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 the owner of over 200 trademark registrations and applications for the mark VO5 and other marks that include “VO5”. These registrations and applications cover virtually every country in the world, including the United States of America. (“U.S.”), where Respondent has listed an address.
Complainant first started using its VO5 mark in 1939 in the U.S. and has since expanded its use throughout the world. Annual sales of goods under the mark exceed $150 million in the U.S. and $75 million in countries outside the U.S. Complainant has spent over $30 million in each of the last five years to promote its VO5 mark.
Complainant registered its VO5 mark in the U.S. over 50 years ago. U.S. registrations include: Reg. No. 822537 VO5 (registered January 17, 1967), Reg. No. 1449193 VO5 (registered July 28, 1987), Reg. No. 658904 ALBERTO VO5 (registered February 25, 1958), Reg. No. 723187 ALBERTO VO5 (registered October 24, 1961), Reg. No. 3078626 ALBERTO VO5 and Design (registered April 11, 2006) and others. These registrations have been in full force and effect since these dates. These rights predate the subject domain name registration by many years.
More recently, Complainant adopted the mark VO5 VICTORY HAIR in connection with an online game contest it runs in promotion of “Extreme Style by VO5.” For this purpose, Complainant registered the disputed domain name . Through an oversight, the domain name registration was allowed to lapse, and Respondent then captured it for $1,500. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name registered by Respondent is identical to Complainant's mark VO5 VICTORY HAIR and is confusingly similar to Complainant's registered marks incorporating the term VO5. Complainant further contends that Respondent has no rights or legitimate interests in respect of the disputed domain name, does not operate a business under the mark VO5 or any variation thereof, and has not made any demonstrable preparations to use the disputed domain name. Complainant contends that the disputed domain name was registered and used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:
(i) the domain name in dispute 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 with respect to the domain name; and
(iii) the domain name has been registered and used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to 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”. A. Identical or Confusingly Similar
The Panel finds that Complainant has demonstrated that it holds common law trademark rights in the mark VO5 VICTORY HAIR and registered trademark rights in the mark VO5. The suffix “.com” should be disregarded for the purpose of determining whether the disputed domain name is identical or confusingly similar to the Complainant's mark under this criterion of the Policy. As such the Panel finds little difficulty in holding that the disputed domain name is identical to the Complainant's common law mark VO5 VICTORY HAIR and confusingly similar to the Complainant's VO5 mark, especially in light of the goods offered under Complainant's mark.
Accordingly, the Panel finds that Complainant has satisfied the requirements under the first element of the Policy. B. Rights or Legitimate Interests
Respondent does not appear to be affiliated or related to Complainant in any way, nor is Respondent licensed by Complainant or otherwise authorized to use the VO5 VICTORY HAIR name or trademark.
There is no evidence in the record to indicate that Respondent is commonly known by the domain name. There is no evidence that Respondent has made any demonstrable preparations to use the disputed domain name for an active website or a trade name and mark. Respondent appears to have only used the domain name as a place holder with the apparent intention to divert Internet users to the websites of others (probably under a pay-per-click arrangement). In the absence of a Response, and in the present circumstances, the use of the disputed domain name as a parking page does not give rise to rights or legitimate interests in the disputed domain name. Nor is the Respondent using the disputed domain name in connection with a bone fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds that Respondent has no rights or legitimate interests with regard to the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that Respondent has registered or 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 the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's 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 Respondent's website or location of a product or service on Respondent's website or location.
Complainant has shown and the evidence of record confirms that the domain name is apparently being used for commercial gain to attract Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website, or location of a product or service on Respondent's website. Complainant's prior use of the VO5 mark for many years prior to Respondent's registration of the domain name leads to the conclusion that Respondent registered and is using the domain name with knowledge of Complainant's rights.
Moreover, in correspondence with Complainant, Respondent fully acknowledged that it purchased the domain name for USD 1500, and wanted USD 3000. As such, in light of Complainant's previous registration of the disputed domain name, it is apparent respondent registered the domain name primarily for the purpose of selling it to Complainant for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name.
Accordingly, the Panel finds the disputed domain name to have been registered and used in bad faith. 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 the Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Dated: November 24, 2008
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