WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bumble & Bumble LLC v. Eduard Gladyshev Case No. D2008-1956 1. The Parties
The Complainant is Bumble & Bumble LLC of New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Eduard Gladyshev of EmeryVille, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2008. On December 23, 2008, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On December 24, 2008, Melbourne IT Ltd 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” or “UDRP”), 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 January 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 28, 2009.
The Center appointed William R. Towns as the sole panelist in this matter on February 4, 2009. 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 provides hair care and beauty services and related hair care products under the BUMBLE AND BUMBLE mark in the United States and elsewhere. The Complainant is the owner of a registeration for the BUMBLE AND BUMBLE mark in the United States, issued by the United States Patent and Trademark Office (USPTO) on February 8, 2005, based on use for hair care services since 1977 and hair care preparations since 1992. The Complainant also holds registrations for the mark in the European Community, the United Mexican States, the People's Republic of China and other countries around the world.
The Respondent registered the disputed domain name on April 17, 2008. The Respondent is using the disputed domain name in connection with a website known as “www.”, on which the Respondent purports to offer for sale the Complainant's complete line of hair care products, in addition to other leading brands of hair and beauty products at discount prices.
The Complainant maintains that the Respondent is not an authorized reseller of genuine BUMBLE AND BUMBLE products. The Respondent's website does not disclose the nature of the relationship, if any, that may exist between the Respondent and the Complainant. The Respondent has not submitted a formal Response, and also provided no reply to a cease and desist letter sent by the Complainant's representative on August 13, 2008. 5. Parties' Contentions A. Complainant
The Complainant maintains that is has exclusive rights to the BUMBLE AND BUMBLE mark in relation to salon services and beauty products based on trademark registrations in the United States and other countries, and extensive use of the mark for more than thirty (30) years. The Complainant asserts that its distinctive BUMBLE AND BUMBLE mark has become well-known as a source indicator of its products and services. The Complainant asserts that the disputed domain name is identical or confusingly similar to its mark.
Further, the Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant avers that has not licensed, authorized or otherwise given its permission to the Respondent to use the Complainant's mark. The Complainant further states that no relationship has ever existed between Complainant and Respondent, that the Respondent is not an authorized reseller of the Complainant's products, that the Complainant does not sell products to the Respondent, and that the products purportedly offered by the Respondent as genuine BUMBLE AND BUMBLE products are adulterated.
The Complainant maintains that the Respondent has registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent knew of the Complainant's rights in the BUMBLE AND BUMBLE mark when the Respondent registered the disputed domain name. Further, the Complainant contends that the Respondent is using the disputed domain name to divert Internet users for commercial gain to the Respondent's website by creating a likelihood of confusion as to affiliation, sponsorship or endorsement by the Complainant.
The Complainant further asserts that the Respondent has registered a number of other domain names appropriating well-known third-party marks, which the Respondent has used to divert Internet users to commercial websites where the Respondent purportedly offers for sale the trademark owners goods alongside competing products. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) 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
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the domain name is confusingly similar to the Complainant's BUMBLE AND BUMBLE mark for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. The disputed domain name incorporates the the Complainant's mark in its entirety, and the Panel is not persuaded that the presence of the generic or descriptive term “my” dispels the confusing similarity thereby created.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is uncontested that the Respondent has not been authorized to use the Complainant's mark or to register domain names reflecting the mark, and there is no indication that the Respondent has been commonly known by the disputed domain name. Nevertheless, the record reflects the Respondent's registration of a domain name incorporating the Complainant's mark in its entirety, and use of the domain name to attract Internet users to a commercial website on which the Respondent purportedly offers for sale the Complainant's hair and beauty products along with products of other “leading brands”.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 Respondent has not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.1 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the ‘safe harbors' of paragraph 4(c) of the Policy.
There is no indication in the record that the Respondent has ever been commonly known by the disputed domain name. Under the circumstances of this case, the Respondent cannot credibly claim to be making a legitimate noncommercial or fair use of the domain name within the contemplation of paragraph 4(c)(iii) of the Policy. See Covanta Energy Corporation v. Anthony Mitchell,WIPO Case No. D2007-0185 (respondent must demonstrate that the domain name is being used without intent for commercial gain in order to successfully invoke paragraph 4(c)(iii) of the Policy).
Nor does the record reflect the Respondent's use or demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services, in light of the criteria set out for distributors or resellers of trademarked products in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The Oki Data panel observed that the following circumstances must be present in order for an offering of goods or services to be bona fide for purposes of paragraph 4(c)(i):
(i) the respondent must actually be offering the Complainant's goods or services at issue. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306.
(ii) the respondent must use the site to sell only the trademarked goods: otherwise it could be using the trademark to bait other Internet users and then switch them to other goods. Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774. (Use of Nikon-related domain names to sell Nikon and competitive cameras was not a legitimate use);
(iii) the site must accurately disclose the registrant's relationship with the trademark owner. See R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton,WIPO Case No. D2000-1201 (no bona fide offering because domain name improperly suggested that the reflected site was the official United States website for Quaife.)
(iv) the respondent must not be allowed to corner the market in domain names that reflect the trade mark.
It is evident from even a cursory glance at the Respondent's website that the second (and possibly third) criteria of Oki Data have not been met. The Respondent's website purports to sell not only the Complainant's products but also those of other “leading brands”. Although the website apparently has previously contained a disclaimer, it was not especially prominent, and in any event appears no longer to be the case. The website currently contains no disclosure regarding the Respondent's relationship – or more to the point the lack thereof – with the Complainant. The Respondent's use of a domain name incorporating the Complainant's distinctive BUMBLE AND BUMBLE mark in its entirety, and the further use of the Complainant's mark on the website, improperly suggest that the site is affiliated with the Complainant and that the Respondent is authorised to sell the Complainant's line of hair care and beauty products. The first criterion in Oki Data is also called into question, given some indication in the record that items represented on the Respondent's website as genuine BUMBLE AND BUMBLE products have been altered or adulterated.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
It is readily apparent from even a cursory review of the Respondent's website that the Respondent knew of and had in mind the Complainant and its BUMBLE AND BUMBLE mark when registering the disputed domain name. The Respondent's registration of a domain name incorporating the Complainant's BUMBLE AND BUMBLE mark with full knowledge of the Complainant's rights in the mark is evidence of bad faith. See Ticketmaster Corp. v. Spider Web Design, Inc.,WIPO Case No. D2000-1551. As prior panels have observed, when a domain name is so obviously connected with a complainant and its products or services, its very use by a registrant with no connection to the complainant suggests “opportunistic bad faith”. Research In Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492 and Paule Ka v. Paula Korenek,WIPO Case No. D2003-0453.
The record clearly reflects that the Respondent has sought to attract Internet users to the Respondent's website for commercial gain by creating a likelihood of confusion in terms of paragraph 4(b)(iv). There also is undisputed evidence in the record that the Respondent has engaged in a similar practice of abusive domain name registration and use regarding other well known third-party trademarks. Additional evidence of bad faith on the part of the Respondent is evidenced by the Respondent's failure to reply to the Complainant's cease and desist letter of August 13, 2008, or to take any remedial action thereafter.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 the Complainant.
William R. Towns
Sole Panelist
Dated: February 18, 2009
1 Some panels have held that a respondent's lack of response in particular circumstances can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent's failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403.
Full & Egal Universal Law Academy