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WIPO Domain Name Decisions DBIZ2002-00230

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WIPO Domain Name Decisions DBIZ2002-00230

    WIPO Arbitration and Mediation Center

    ADMINISTRATIVE PANEL DECISION

    Soft Sheen / Carson Inc. v. International Newcastle

    Case No. DBIZ2002-00230

    1. The Parties

The Complainant is Soft Sheen / Carson Inc., a corporation with a principal place of

    business at 1000 East 87th Street, Chicago Illinois 60619, USA. Complainant is

    represented in this proceeding by Sophie de Malherbe, L’Oréal, 62 rue d’Alsace,

    92 583 Clichy Cedex, France.

The Respondent in this proceeding is International Newcastle, whose address is FOR

    SALE at DomainCollection.com, Miami, Florida 33186, United States of America.

2. The Domain Name and Registrar

The domain name in dispute is .

The registrar for the disputed domain name is Iholdings.Com / Dotregistrar.Com,

    13205 SW 137th Avenue, Suite # 133, Miami, Florida 33186, United States of America.

    3. Procedural History

This Complaint will be considered and resolved pursuant to the guidelines set forth in

    the Start-up Trademark Opposition Policy for .BIZ (“STOP”) adopted by NeuLevel, Inc.

    and approved by the Internet Corporation for Assigned Names and Numbers (ICANN)

    on May 11, 2001, the Rules for Start-up Trademark Opposition Policy for .BIZ adopted

    by NeuLevel, Inc. (the “STOP Rules”), and the World Intellectual Property Organization Arbitration and Mediation Center’s (the “Center”), Supplemental Rules

    for Start-up Trademark Opposition Policy for .BIZ (the “Supplemental STOP Rules”).

The Complaint was filed on April 29, 2002, in hard copy, and on May 13, 2002, by

    e-mail.

On June 5, 2002, the Center sent a Request for Registrar Verification to the Registrar

    Iholdings.Com/Dotregistrar.Com ,and again on June 21, 2002. On June 26, 2002, the

    page 1

Registrar sent a Response to the Center, confirming the Registrar had registered the

    disputed domain name and that STOP was in effect.

The Center sent Complainant a STOP Complaint Deficiency Notice by e-mail on July 2,

    2002, regarding the payment of fees and the identity and location of the Respondent. In

    response, Complainant filed an Amendment to the Complaint on July 5, 2002, which

    covered these issues.

On July 26, 2002, the Center forwarded a copy of the Complaint to Respondent by

    registered mail and by e-mail and this proceeding officially began. After not receiving

    a response, the Center sent Respondent a Notification of Respondent Default by e-mail

    on August 16, 2002.

The Administrative Panel submitted a Declaration of Impartiality and Independence on

    August 21, 2002, and the Center proceeded to appoint the Panel on that date. The Panel

    finds the Center has adhered to STOP, the STOP Rules and the Supplemental STOP

    Rules in administering this Case.

    4. Factual Background

As an American company, Complainant currently sells hair and skincare products

    internationally under the mark, "Carson", for which it owns a registered United States

    trademark.

Respondent is listed as the Registrant of the disputed domain name. The record of

    registration was created on March 27, 2002.

    5. The Parties’ Contentions (Summarized)

    Complainant’s Contentions

Complainant has used the "Carson" mark since 1972 in connection with the production

    and sale of a range of hair and skincare products in the United States of America. The

    mark is also currently used for the same purposes in about sixty other countries.

Complainant owns a registered United States trademark for "Carson".

Respondent’s domain name is identical to the Complainant Trademark.

Respondent has no rights or legitimate interests in the disputed domain name.

    Respondent has no connection or affiliation with the Complainant, who has not

    consented to the Respondent’s registration of the disputed domain name.

Respondent registered the domain name in bad faith. Respondent’s

    primary purpose in acquiring the disputed domain name was for resale for a price in

    excess of Respondent’s out-of-pocket costs directly related to the domain name. This is evidenced by Respondent's own listed mailing address (For Sale at

    domaincollection.com), Respondent's e-mail address ()

    and the listing for sale of the disputed domain name at that e-mail address.

    Respondent’s Contentions

    page 2

Respondent did not submit a Response in this proceeding.

    6. Discussion and Findings

    Due Process

The Center forwarded a copy of the Complaint to Respondent by hard copy and e-mail

    and sent Respondent a Notification of Respondent Default by e-mail. In view of these

    actions by the Center, the Panel is convinced that Respondent has been fairly notified of

    these proceedings and that Respondent's right to due process has not been violated.

In order for Complainant to prevail in this proceeding and gain transfer of the disputed

    domain name, , Complainant must prove the following (STOP,

    paragraphs 4(a)(i-iii):

    - the domain name is identical to a trademark or service mark in which the

    Complainant has rights; and

    - the Respondent has no rights or legitimate interests in respect of the domain

    name; and

    - the domain name was registered or is being used in bad faith.

Identical

The Panel finds that Complainant owns a registration of the trademark "Carson" in the

    United States (U.S. Registration No. 988772, dated July 23, 1974, for the manufacture

    and sale of hair and skin care products) (Complaint Annex 3).

The record makes it evident to the Panel that Complainant's rights in this trademark

    arose significantly prior to Respondent's registration of the disputed domain name. The

    disputed domain name, , contains Complainant's entire mark plus the

    addition of the gTLD ".biz". The inclusion of that gTLD is not significant as all

    proceedings under STOP involve a dispute over a domain name containing that gTLD.

The Panel finds that, in satisfaction of paragraph 4(a)(i) of STOP, Complainant has

    proved that the disputed domain name is identical to a trademark or service mark in

    which the Complainant has rights.

No Rights or Legitimate Interests

The Panel notes the difficulty faced by Complainant in proving that Respondent has no

    rights or legitimate interests in the disputed domain name, since to do so would be to

    prove a negative. Therefore, the Panel deems it appropriate to follow numerous prior

    panels operating under the Uniform Domain Name Dispute Resolution Policy (the

    "Policy") in requiring Complainant to establish lack of rights and legitimacy on only a

    prima facie basis before shifting the burden to Respondent to produce contrary

    evidence. See Prisma Presse v. Buydomains.com, WIPO Case No. D2001-1073

    (October 22, 2001).

Since Complainant owns a valid trademark identical to the disputed domain name and

    has stated that Complainant has not authorized or licensed Respondent to use that

    name, Complainant has, in the view of the Panel, made a prima facie case.

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    Paragraph 4(c) of STOP offers Respondent three specific ways to establish its rights or legitimate interests in the disputed domain name. Having filed no Response, Respondent has not contended and the Panel finds no evidence that any of the circumstances listed in paragraph 4(c) exist in this case. Furthermore, there is nothing in the record to suggest any other basis upon which to conclude that Respondent has any rights or legitimate interests in the disputed domain name.

    In accordance with the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

    Bad Faith

    Paragraph 4(b)(i) of STOP, directs the Panel that a finding of bad faith registration or use of a domain name should obtain if the Panel determines that Respondent registered the name for the primary purpose of selling, renting or otherwise transferring it to Complainant or a competitor of Complainant for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name.

    As evidence that Respondent has engaged in just such conduct, Complainant points the Panel to the Respondent's various addresses, which all suggest that Respondent is engaged in the habitual resale of domain names, and to the actual advertisement for sale of the disputed domain name on Respondent's web site (Complaint Annex 5). The Panel also notes that, as is true of most challenged ".biz" domain names, no web site is operative at the disputed domain name. At least one panel ruling pursuant to the Policy has stated that, where a web site is active, a mere showing that a domain name holder offers the domain name for sale is not necessarily evidence of bad faith registration (See The State Bar of California v. eWebnation.com, Inc., NAF Case No. FA97137

    [June 14, 2001]). However, the absence of web site activity in this case leads the Panel to find persuasive the reasoning found in prior Policy cases, where panels have found bad faith based solely on the auctioning of a non-used domain name (See for example, Wrenchead.com, Inc. v. Hammersla, WIPO Case No. D2000-1222

    [December 12, 2000]).

    Therefore, the Panel finds that, per paragraph 4(b)(i) of STOP, the disputed domain name was registered in bad faith.

    7. Decision

    The Panel has found that the disputed domain name, , is identical to Complainant’s "Carson" trademark. The Panel also has found that Respondent has no rights or legitimate interests in the disputed domain name. Finally, the Panel has found that Respondent registered the disputed domain name in bad faith because Respondent's primary intent in registration was to transfer the disputed domain name to Complainant, or a competitor of Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.

    Thus, pursuant to paragraphs 4(i) of STOP and 15 of the STOP Rules, the Panel orders that the disputed domain name, , be transferred from Respondent, International Newcastle, to Complainant, Soft Sheen / Carson Inc.

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___________________

    Dennis A. Foster

    Sole Panelist

Dated: September 5, 2002

    page 5

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