Complainant is Elementage LLC (“Complainant”), New York, New York, United States of America, represented by Davis & Gilbert LLP of New York, New York, United States of America.
Respondent is Chris Hayes (“Respondent”), New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <elementage.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
On January 15, 2008, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On January 17, 2008, the Center received hardcopy of the Complaint. On January 19, 2008 the Center sent an Acknowledgment of Receipt of Complaint to Complainant. Complainant paid the required fee.
On January 16, 2008 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in Respondent’s name.
The Center verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On January 22, 2008, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent together with copies of the Complaint, with a copy to Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On February 12, 2008, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.
On February 20, 2008 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Panel.
4. Factual Background
Complainant is a manufacturer of professional hair care and styling products. Complainant’s sole member, John Barrett, is a world-renowned hair stylist and owner of the John Barrett Salon in New York City. In addition to the John Barrett Salon, which Mr. Barrett has operated for the past eleven years, Mr. Barrett (in conjunction with Complainant) has launched several lines of hair care products and related goods over the past decade. Mr. Barrett has spent considerable time, effort and funds developing and promoting a new line of vitamin-enriched hair care products known as “Elementage.” Launched in June 2007, the Elementage line is currently available at Mr. Barrett’s salon, as well as several upscale salons and boutiques.
Complainant hired Respondent in May 2006 to assist in the production and launch of John Barrett’s Elementage line of hair care products. In his capacity as a marketing employee, Respondent was paid at a rate of $7,000 to $8,000 per month. Respondent never received, nor was he promised, equity in the Elementage product line. Respondent publicly held himself out as the “Chief Marketing Officer” of Elementage in the United States Patent & Trademark Office (“USPTO”) trademark application for the “Elementage” mark filed in Complainant’s name (then the name Hardcap, LLC).
In April 2007, Respondent was instructed to register the Domain Name on behalf of Complainant. On April 3, 2007, Respondent registered the Domain Name.
Consistent with his instructions, Respondent used Mr. Barrett’s credit card as payment for registering the Domain Name. Respondent identified the credit card charge as pertaining to the Domain Name when queried by Complainant’s financial officer. Unbeknownst to Complainant or Mr. Barrett, Respondent registered himself as the owner of the Domain Name.
Dissatisfied with Respondent’s job performance and request for exorbitant and unwarranted compensation, Complainant’s management terminated Respondent on December 10, 2007. Following his termination, Respondent removed all Elementage-related content from the website associated with the Domain Name. Respondent replaced this legitimate content with a “web farm” that contained a search engine and links to commercial advertisements for multiple third parties from which Respondent likely derived revenue from Google for impressions and click-throughs. Moreover the website prominently featured the name “John Barrett”, thereby diverting both current and prospective Elementage and John Barrett customers to Respondent’s unauthorized and unaffiliated website. On or about January 10, 2008, Respondent replaced the web farm with a message that reads: “This Site Is Under Construction and Coming Soon.”
5. Parties’ Contentions
A. Complainant’s contentions
(i) Complainant contends that it has been issued a Notice of Allowance from the USPTO for its ELEMENTAGE mark. Complainant claims trademark rights for purposes of this administrative proceeding under this Notice of Allowance and under common law rights which have arisen through use of the ELEMENTAGE mark.
(ii) Complainant argues that the Domain Name is confusingly similar to its ELEMENTAGE mark, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the ELEMENTAGE mark with the addition of the extension “.com” which is a non-distinctive term.
(iii) Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.
Complainant further contends that Respondent has intentionally and willfully used the Domain Name in derogation of Complainant’s rights and therefore cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) because he has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services.
Complainant further contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because he is known as “Chris Hayes” and is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the ELEMENTAGE mark in a domain name or in any other manner.
Complainant further contends that Respondent has used the Domain Name as a web farm being paid for impressions or click-throughs or as an “under construction” place holder. Under either circumstance, Complainant alleges that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the ELEMENTAGE mark.
(iv) Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii).
Complainant argues that the Respondent has by using the domain name, intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant's ELEMENTAGE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product. Such actions are bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy.
B. Respondent’s contentions
Respondent has chosen not to file a Response and therefore does not dispute that the Complainant’s allegations.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie,
WIPO Case No. D2000-1772.
Failure to File a Response
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc,
WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, S.a.S., NAF Case No. FA 94637; David G. Cook v. This Domain is For Sale, NAF Case No. 94957 and Gorstew (“Gurstew”) Jamaica, and Unique Vacations, Inc. (“Unique”) v. Travel Concierge, NAF Case No. 94925.
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel must review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that 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) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
A. Enforceable Trademark Rights
Complainant contends that it has a Notice of Allowance from the USPTO for the ELEMENTAGE mark. Complainant claims trademark rights for purposes of this administrative proceeding under this Notice of Allowance and under common law rights which have arisen through use of the ELEMENTAGE mark. As the ELEMENTAGE mark has not yet registered as the USPTO, the Complainant cannot claim registration as prima facie evidence of its trademark rights.
To establish common law rights in a trademark, it is necessary to show continuous use of the mark as a source identifier such that it has achieved secondary meaning with consumers as an indicator of the source of goods or services supplied in trade or commerce and that, as a result of such use, the name has become distinctive of that source.
Complainant does allege and give examples of it use of the ELEMENTAGE mark to support its claim of common law rights. Mr. Barrett has operated the John Barrett Salon for the past eleven years. Mr. Barrett (in conjunction with Complainant) has launched several lines of hair care products and related goods over the past decade. Mr. Barrett has spent considerable time, effort and funds developing and promoting a new line of vitamin-enriched hair care products known as “Elementage”. Launched in June 2007, the Elementage line is currently available at Mr. Barrett’s salon, as well as several upscale salons and boutiques.
The Panel finds that although the Complainant has not offered any direct evidence of its use of the ELEMENTAGE mark, its uncontested allegations of use in conjunction with the USPTO’s issuance of the corresponding Notice of Allowance just clears the hurdle required under the Policy, and is therefore, sufficient for purposes of this proceeding to establish the existence of common law trademark rights in the ELEMENTAGE mark.
B. Identity or Confusing Similarity
Complainant further contends that the Domain Name is identical with and confusingly similar to its ELEMENTAGE mark pursuant to the Policy paragraph 4(a)(i), because the Domain Name wholly incorporates the ELEMENTAGE mark with the addition of the extension “.com” which is a non-distinctive term.
Respondent has not contested the assertions by Complaint that the Domain Name is confusingly similar to the ELEMENTAGE mark.
As numerous courts and prior Panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman,
WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical).
The Panel finds that the entirety of the ELEMENTAGE mark is included in the Domain Name and further notes that the addition of the phrase “.com” is non-distinctive because it is a gTLD required for registration of a domain name.
Therefore, the Panel finds that the Domain Name is confusingly similar to the ELEMENTAGE mark pursuant to the Policy paragraph 4(a)(i).
C. Rights or Legitimate Interests.
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii) because Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.
Complainant further contends that Respondent has intentionally and willfully used the Domain Name in derogation of Complainant’s rights and therefore cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) because he has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services under paragraph 4(c).
Complainant further contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because he is known as “Chris Hayes” and is not commonly known under the Domain Name. Respondent has no present connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the ELEMENTAGE mark in a domain name or in any other manner.
Complainant further contends that Respondent has used the Domain Name as a web farm being paid for impressions or click-throughs or as an “under construction” place holder. Under either circumstance, Complainant alleges that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the ELEMENTAGE mark.
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
The Complainant has sustained its burden of coming forward with proof that the Respondent lacks rights to or legitimate interests in the Domain Name. Respondent has chosen not to respond, and therefore not to contest Complainant’s allegations. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
D. Registered and Used in Bad Faith.
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(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 on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product
Complainant argues that the Respondent has by using the domain name, intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s ELEMENTAGE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product. Such actions demonstrate bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy.
The Panel finds that Respondent publicly held himself out as the “Chief Marketing Officer” of Complainant in the USPTO trademark application of the ELEMENTAGE mark which was filed in Complainant’s name (then the name Hardcap, LLC). The Panel finds that this evidences Respondent’s awareness of Complainant’s trademark rights, hence Respondent had actual knowledge of the ELEMENTAGE mark and that the ELEMENTAGE mark properly belonged to Complainant. The Panel further finds that use of the Domain Name by Respondent was and is likely to create confusion as to the source, sponsorship, affiliation or endorsement of the website.
Upon his termination by Complainant, Respondent replaced the “Elementage” related content with a “web farm” that contained a search engine and links to commercial advertisements for multiple third parties from which Respondent likely derived revenue from Google for impressions and click-throughs. Moreover the website prominently featured the name “John Barrett”, thereby diverting both current and prospective Elementage and John Barrett customers to Respondent’s unauthorized and unaffiliated website. The Panel further finds that Complainant’s allegations that Respondent was compensated while using the Domain Name as a web farm are uncontested.
The Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).
7. Decision
The Panel concludes (a) that the Domain Name <elementage.com> is confusingly similar to Complainant’s common law ELEMENTAGE mark, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <elementage.com> be transferred to Complainant.
Richard W. Page Sole Panelist
Date: March 5, 2008
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