Complainant is Sexy Hair Concepts, LLC of Chatsworth, California, United States of America, represented by Day Pitney LLP, United States of America.
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Wyatt Hyatt of New York City, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2018. On December 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 6, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on the same date.
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” 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 2, 2019.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on January 7, 2019. 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 subsidiary of Henkel AG & Co. KGaA (“Henkel”), a global chemical goods developer and manufacturer providing a wide array of, inter alia, hair care, beauty care, and home care products for consumers. Complainant provides these products under the trademarks SEXY HAIR and SEXYHAIR (the “SEXY HAIR Marks”). Complainant owns valid and subsisting registrations for the SEXY HAIR Marks, used in commerce since 1998, including United States Registration Number 2403396 (registered on November 14, 2000). Complainant owns and operates its primary website in connection with its business, located at “”.
The disputed domain name was registered on October 21, 2018, and at the time of Complainant’s filing, failed to resolve to any active website. 5. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant asserts that the disputed domain name contains Complainant’s entire SEXY HAIR trademark, with the typographical error or addition of the letter “e” at the end of the name, and is therefore confusingly similar to Complainant’s SEXY HAIR Marks.
Complainant also asserts that Respondent has no rights or legitimate interests in the disputed domain name, given that Respondent (i) does not own any trademark or service mark registrations encompassing the disputed domain name, nor any variations thereof; (ii) is not commonly known by the disputed domain name; (iii) is not making a legitimate, noncommercial, or fair use of the disputed domain name without intent for commercial gain, and (iv) primarily registered and used the disputed domain name to impersonate Complainant and its parent company to fraudulently solicit payment from Complainant’s business partners, namely by using an email address associated with the disputed domain name to request payment of fraudulent invoices in the amount of USD 300,000. Complainant states that based on this activity, Complainant successfully contacted the hosting provider associated with the disputed domain name and the hosting provider indefinitely suspended services associated with the disputed domain name. According to Complainant, Respondent intentionally sought to create confusion with Complainant’s marks and infringe Complainant’s trademark rights in furtherance of this scheme. Complainant asserts that UDRP panels have consistently held that such use of a complainant’s trademark cannot give rise to a legitimate right or interest on the part of the respondent.
Similarly, Complainant asserts that Respondent’s registration and use of the disputed domain name is in bad faith, given that Respondent registered and is using the disputed domain name to impersonate Complainant to fraudulently solicit payment from Complainant’s business partners and consumers. More specifically, according to Complainant, Respondent’s activities constitute bad faith under paragraph 4(b) (iv) of the Policy because by using the disputed domain name as the origin of a phishing email, Respondent intentionally attempted to attract, for commercial gain, payment from Complainant’s wholesale distributor, by creating a likelihood of confusion between Complainant’s SEXY HAIR Marks and the source or affiliation of the fraudulent emails. According to Complainant, Respondent’s use of a privacy proxy service to register the domain to hide its identity from Complainant and others is further indication of bad faith.
Accordingly, Complainant requested the disputed domain name be transferred to it. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of ownership of the SEXY HAIR Marks, which have been used since at least as early as 1998, and registered since at least as early as 2000, well before Respondent registered the disputed domain name on October 21, 2018. With Complainant’s rights in the SEXY HAIR trademarks established, the remaining question under the first element of the Policy is whether the disputed domain name, typically disregarding the generic Top-Level Domain (“gTLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc/Joseph Gross,WIPO Case No. D2010-0842.
Here, the disputed domain name is confusingly similar to Complainant’s SEXY HAIR and SEXYHAIR trademarks, because these marks (which are identical other than the single space between “SEXY” and “HAIR” in the first mark) are fully incorporated into the disputed domain name at the second level and the typographical error of adding the letter “e” at the end of the mark does nothing to prevent a finding of confusing similarity. See, e.g., Comerica Bank v. Kimberly Barnes,WIPO Case No. D2014-1052.
Thus, Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained their burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the SEXY HAIR Marks, and does not have any rights or legitimate interests in the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that Respondent used the disputed domain name to impersonate Complainant, and to contact Complainant’s clients and other individuals in the hopes of fraudulently inducing them to pay Respondent money under the fraudulent pretense of previously-issued invoices by Complainant. See WIPO Overview 3.0, Sections 2.13.1; 2.13.2 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., … phishing, … impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent…. [P]anels have found that circumstantial evidence can support a complainant’s otherwise credible claim of illegal respondent activity….”); see also, e.g., AllianceBernstein, L.P. Composed of AllianceBernstein Corporation v. Privacy Protect, LLC / Mike Berns, Bernstein Securities LLC,WIPO Case No. D2018-2405 (“Rather, the evidence demonstrates that Respondent used the disputed domain name to impersonate Complainant, or an affiliate thereof, and to contact Complainant’s clients and other individuals in the hopes of fraudulently inducing them to pay Respondent money …. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy”).
Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the disputed domain name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the disputed domain name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(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; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”.
The Panel finds that Complainant provided ample evidence to show that use and registration of the SEXY HAIR Marks long predates the registration of the disputed domain name by Respondent. Therefore, Respondent was likely aware of the SEXY HAIR Marks when it registered the disputed domain name, or knew or should have known that the disputed domain name was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3, 2, 1; see also TTT Moneycorp Limited v. Privacy Gods/Privacy Gods Limited,WIPO Case No. D2016-1973.
Respondent’s use of the SEXY HAIR Marks in connection with its phishing attempt appears to have been done in an effort to trade on the goodwill associated with these marks in furtherance of the fraudulent scheme, for commercial gain, in violation of paragraph 4(b)(iv) of the Policy. See, e.g., Barclays Bank PLC v. PrivacyP / Sylvia Paras,WIPO Case No. D2011-2011. Respondent’s use of proxy services to mask their identity and hinder potential enforcement proceedings is also indicative of bad faith in this context. See WIPO Overview 3.0, section 3.6.
Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith and Complainant succeeds under the third element of paragraph 4(b) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, be transferred to Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: January 21, 2019
Full & Egal Universal Law Academy