Complainants are 938023 Ontario Inc., Canada and Alexandria Professional, LLC, United States of America (“United States”), represented by Litmus Law PLLC, United States.
Respondent is Olivia Brown, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2021. On May 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 15, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2021. The Response was filed with the Center on June 6, 2021. The Center appointed Robert A. Badgley as the sole panelist in this matter on June 14, 2021. 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 describes itself as “the global authority of body sugaring,” which is a hair removal system. According to Complainant’s website, located at “www.alexandriaprofessional.com”, Complainant essentially does three things: (1) provide “world-class certification” to people wishing to learn body-sugaring hair removal techniques; (2) sell skincare products; and (3) partner with “global beauty distributors to help [clients] access [Complainant’s] system almost anywhere”. Complainant also operates, and advertises at its website, the “Alexandria Professional Academy,” through which Complainant trains skincare professionals to master body sugaring and related hair removal techniques. Complainant has described its educational services as “Alexandria Professional Academy” since 2012. Complainant holds various trademark registrations in several jurisdictions, including: (1) United States Patent and Trademark Office (“USPTO”) Reg. No. 3,512,144 (registered October 7, 2008) for the mark ALEXANDRIA in connection with “hair removal waxes, pastes and lotions”, with a June 1, 1988 date of first use in commerce; and (2) USPTO Reg. No. 4,953,656 (registered May 10, 2016) for the mark ALEXANDRIA PROFESSIONAL in connection with, inter alia, “hair removal and skin care products, namely, sugar paste for body, [etc.]” and “educational services, namely, classes and seminars for teaching permanent hair removal using sugar-based product techniques” with a December 31, 2004 date of first use in commerce. The Domain Names were registered on January 5, 2017. The Domain Names do not resolve to an active website. Rather, they are redirected to an inactive website located at “www.advancedspaeducation.com”. According to Complainant, Respondent was “previously an independent contractor with Complainant as an educator who would offer Complainant’s services under the marks ALEXANDRIA PROFESSIONAL, ALEXANDRIA PRO ACADEMY and ALEXANDRIA PROFESSIONAL ACADEMY”. Between February 1, 2021, and March 30, 2021, the Parties exchanged emails regarding the Domain Names. On February 2, 2021, Complainant employee “NK” wrote to Respondent: “While we understand that your intent was to register the domains for your work with Alexandria Professional LLC, no educator or distributor with our company has the right to register a domain using the name Alexandria Professional® unless they’ve been given explicit, written consent. Alexandria Professional is a registered trademark owned by Alexandria Professional LLC and as such, we have full control over who can and cannot use this mark. It is our understanding that no agreement or written consent was provided before you purchased these domains. Furthermore, even if these domains were purchased under the assumption that it would be for educational work in relation to Alexandria Professional LLC, you currently have the domain alexandriaproacademy.com pointing towards advancedspaeducation.com. If your website were up and running, this would be considered a sign of intent to confuse the market and a severe infringement on our trademark.” Complainant ended this February 2, 2021 email by offering to purchase the two Domain Names for a “carrying fee” of USD 100. On February 11, 2021, Complainant sent a follow-up email reiterating the USD 100 offer and stating that, if Respondent’s actual expenses regarding the Domain Names exceeded that amount, Respondent should submit her receipts to Complainant to justify a higher “carrying fee”. On March 30, 2021, Respondent sent an email stating that she would transfer the two Domain Names for USD 500 apiece, i.e., USD 1,000 in total. Respondent provided no explanation for her quoted sale price. In her Response in this proceeding, Respondent wrote: “I have only asked a reasonable amount to recompense to recoup costs. USD 500 per domain covers the registration costs plus costs associated with the administration of the domains by a contractor.” Respondent provides no evidence of her alleged “administration” costs. 5. Parties’ Contentions A. Complainant Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Names. B. Respondent Respondent denies that she registered the Domain Names in bad faith, stating that there was a “business relationship” with Complainant at the time of the Domain Name registrations. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to each of the Domain Names: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel concludes that Complainant has rights in the trademark ALEXANDRIA PROFESSIONAL through registration and use demonstrated in the record. The Panel also finds that the Domain Names are confusingly similar to Complainant’s mark. In one instance, the Domain Name entirely incorporates the mark ALEXANDRIA PROFESSIONAL and then adds the word “academy”, which term describes one of Complainant’s core services under its mark, namely training people to perform various hair removal techniques. In the other instance, the Domain Name differs from the first Domain Name only insofar as the word “pro” replaces the word “professional”. This change is of no moment, as “pro” is a well-established shorthand term for “professional”. Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel concludes that Respondent lacks rights or legitimate interests vis-à-vis the Domain Names. On the undisputed record here, Complainant does not permit its trained educators to use the ALEXANDRIA PROFESSIONAL mark without express written consent. It is undisputed that Respondent had no such consent here. Moreover, although the record here is not altogether clear, the fact that the Domain Names are redirected to a website (albeit an undeveloped site) at “www.advancedspaeducation.com” appears suspicious. At a minimum, it suggests a strong possibility that Respondent had plans to trade on the renown of Complainant’s trademark. Complainant has established Policy paragraph 4(a)(ii). C. Registered or Used in Bad Faith For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Names in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Names, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent registered the Domain Names in bad faith. It is clear that Respondent, a former teacher for Complainant, was well aware of the ALEXANDRIA PROFESSIONAL trademark at the time she registered the Domain Names. It is also undisputed that she did so without the knowledge or consent of Complainant. It is also clear that the redirection is not a fair or appropriate use. As respects bad faith use, the Panel concludes on this sparse record that Respondent is in violation of the above-quoted Policy paragraph 4(b)(i). Respondent had the opportunity to justify her USD 1,000 demand for a transfer of the Domain Names, both during her email exchange with Complainant in early 2021 and in her Response to the Complaint filed in this proceeding. Respondent did not avail herself of such an opportunity, and, in the Panel’s view, it should have been easy to prove up out-of-pocket expenses directly related to the Domain Names. On this record, the Panel concludes that Respondent’s USD 1,000 demand was an unjustified attempt at price gouging by Respondent. Complainant has established Policy paragraph 4(a)(iii). 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 Domain Names Robert A. Badgley
Sole Panelist
Date: June 21, 2021
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