Complainant is Creative Nail Design, Inc., United States of America (“United States”), represented by Dorsey & Whitney, LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Michael Georgoff, Main Street Hub, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2019. On June 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2019, 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 Complaint. The Center sent an email communication to Complainant on June 13, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to Complaint. Complainant filed an amended Complaint on June 17, 2019 and a further amendment to the Complaint on June 21, 2019.
The Center verified that the Complaint together with the amendments to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 26, 2019. On July 1, 2019, an email was received from Respondent offering to transfer the disputed domain name to Complainant. In light of the offer, the Center requested Complainant to confirm whether it wished to suspend the proceeding. On July 5, 2019, Complainant informed the Center it wished to proceed with the case. In accordance with the Rules, paragraph 5, the due date for the Response was July 16, 2019. No formal Response was filed with the Center, and the Parties were informed of the Commencement of Panel Appointment on July 19, 2019.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on July 30, 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 Creative Nail Design, Inc., (“CND” or “Complainant”) is a leader in professional nail, hand and foot beauty, and offers professional nail care around the world. Complainant is an indirect subsidiary of Revlon Consumer Products Corporation. Complainant created the well-known SHELLAC brand 14+ day gel polish nail color system. Complainant spent four years and several million USD developing the long wear nail color products under the SHELLAC trademark. Complainant owns valid and subsisting registrations for the SHELLAC trademarks (the “SHELLAC Marks”), used in commerce since 2010, including United States Registration Number 4,810,820 (registered September 15, 2015).
Respondent registered the disputed domain name, , on August 27, 2018. At the time of Complainant’s filing, the disputed domain name resolved to a website for “Shellac Nails & Spa,” a spa and nail salon located in Oklahoma City, Oklahoma, United States. 5. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant asserts that it has expended very large financial resources on research and development, launching a new line of cosmetic long-wear nail color products under the SHELLAC trademark. Complainant contends the disputed domain name is confusingly similar to Complainant’s SHELLAC Marks because it incorporates the entirety of the SHELLAC mark and adds the generic terms “nails,” “and,” and “spa”. Complainant further contends the addition of the generic Top-Level Domain (“gTLD”) “.com” does not avoid likely confusion.
Complainant asserts Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent has no relationship with Complainant and Complainant has not authorized Respondent to use the SHELLAC Marks or the disputed domain name. Complainant contends that its registrations for and use of the SHELLAC trademark pre-date Respondent’s registration and use of the disputed domain name. Complainant further contends that Respondent had, at a minimum, constructive knowledge of Complainant’s rights in the SHELLAC Marks from the registrations in the United States, where Respondent is located. Complainant asserts Respondent has not made use of, or demonstrable preparation to use the disputed domain name in connection with bona fide offering of goods or services under the SHELLAC Marks, nor could Respondent do so in light of Complainant’s exclusive rights to do so in connection with the SHELLAC Marks. Complainant contends Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademark. Complainant asserts Respondent is using Complainant’s trademark to capitalize on the goodwill of Complainant’s trademark to misleadingly divert consumers. Complainant asserts Respondent is using the disputed domain name to offer closely related services to those of Complainant, showing an intent to create confusion as to source or affiliation.
Complainant asserts the disputed domain name was registered and is being used in bad faith. Complainant asserts Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion as to source, sponsorship or endorsement. Complainant asserts Respondent has registered the disputed domain name to misappropriate the goodwill associated with Complainant’s SHELLAC Marks and misleadingly divert consumers for commercial gain. Complainant contends Respondent is operating the disputed domain name in connection with nail salon services, featuring the SHELLAC Marks throughout the website, which directly overlap with similar services offered by Complainant under this mark. Complainant further contends that the photographs featured on the website feature gel polish and other products from Complainant’s competitors. Complainant asserts that it sent a cease and desist letter to Respondent but that Respondent did not make any substantive reply to the letter. Complainant contends Respondent’s failure to respond to the cease and desist letters is indicative of bad faith. Complainant further asserts Respondent had a Facebook page that was removed by Complainant, after a customer contacted Complainant inquiring about the relationship between the two parties. Complainant finally asserts that it is clear Respondent is using Complainant’s trademark in the disputed domain name knowingly in order to divert potential customers to Respondent’s website. B. Respondent
Respondent did not submit a formal response, but consented to the remedy requested by Complainant, in its email communication dated July 1, 2019. 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:
“[…]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 formally 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. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of ownership of the SHELLAC Marks. With Complainant’s right in the SHELLAC mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the 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 SHELLAC Marks, because the SHELLAC mark is fully incorporated into, and is the predominant element of, the disputed domain name at the second level, and the addition of the generic terms “nails,” “and” and “spa” does not prevent a finding of confusing similarity. See GA Modefine SA v. [-], A’s Administrative Contact,WIPO Case No. D2006-1351 (recognizing that numerous cases have held that incorporating a trademark in its entirety is sufficient to establish that a domain name is confusingly similar to the complainant’s registered mark). The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its right in the SHELLAC Marks, and showing that the disputed domain name is identical or confusingly similar to this mark. 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 Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, there is no evidence that Respondent has any rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is affiliated with, authorized, licensed to, or otherwise permitted to use the SHELLAC Marks associated with Complainant. Further, 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 associate itself with Complainant and trade on the goodwill associated with Complainant’s SHELLAC Marks without authorization, to offer directly competing services as well as those of Complainant’s competitors, for commercial gain. This type of “passing off” is expressly found by prior UDRP panels not to confer any rights or legitimate interests on Respondent. 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, . . . impersonating/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent . . . .”).
Respondent has failed to submit any evidence demonstrating a right or legitimate interest in the disputed domain name, and therefore Complainant has met its burden in establishing that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and used 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 web site 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.”
In this proceeding, Complainant provided evidence to show use and registration of the SHELLAC Marks in the United States long before the registration of the disputed domain name by Respondent. Therefore, Respondent was likely aware of the SHELLAC 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 Marks. 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; see, e.g., Kate Spade, LLC v. Darmstadter Designs,WIPO Case No. D2001-1384 (holding had Respondent done a trademark search at the time Respondent registered the domain name at issue, Respondent would have received notice of Complainant’s pending application for registration and placed on constructive notice).
Respondent has not been authorized by Complainant to offer SHELLAC branded goods or services or otherwise use the SHELLAC Marks in connection with Respondent’s business. Respondent is offering services to consumers under Complainant’s SHELLAC Marks that are in direct competition with Complainant’s own goods and services provided under this Marks. Respondent’s use of the disputed domain name to maintain a website for a spa and nail salon using Complainant’s SHELLAC Marks in this manner constitutes use of the disputed domain name primarily for the purposes of attracting Internet users for commercial gain, within the meaning of Policy paragraph 4(b)(iv). See generally G4S Plc v. Softech International Co.,WIPO Case No. D2018-2393; Creative Nail Design, Inc. v. Arunas Bruzas, Shellac Limited and CND Shellac Limited,WIPO Case No. D2015-0158; E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
In this context, Respondent’s failure to respond to Complainant’s cease and desist letters are further evidence of bad faith.
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(a) 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, to be transferred to Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: August 27, 2019
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