Great Lengths Haarvertriebs GmbH, Indorata-Servicos e Gestado Lda, Great Lengths Universal Hair Extensions S.r.l. v. UAB Haycom
Case No. D2015-1540
1. The Parties
The Complainants are Great Lengths Haarvertriebs GmbH of Rosental, Austria, Indorata-Servicos e Gestado Lda of Funchal, Madeira, Portugal, and Great Lengths Universal Hair Extensions S.r.l. of Nepi, Italy (hereinafter the “Complainant”) represented by e|n|w|c Natlacen Walderdorff Cancola Rechtsanwälte GmbH, Austria.
The Respondent is UAB Haycom of Vilnius, Lithuania.
2. The Domain Name and Registrar
The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2015. On August 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 2015, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on September 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2015.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on October 19, 2015. 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.
The Complainant develops, manufactures and sells products, equipment and services for the care of hair and hair extensions. Complainant has been active in the field of hair extensions since 1995. Its products are available around the world. The Complainant markets its goods and services under the name “Great Lengths” ever since.
The Complainant owns in particular the following trademark registrations (the Trademarks) for goods and services in different classes:
- Community Trademark No. 004541074 of May 30, 2006 covering goods and
services in classes 3, 8, 10, 21, 22, 26, 41 and 44.
- International Trademark No. 1024686 of September 14, 2009 covering goods
and services in classes 3, 8, 10, 21, 22, 26, 41 and 44.
- International Trademark No. 659506 of May 3, 1996 that covering goods and
services in classes 3, 10, 22 and 26 and duly renewed.
- US Trademark No. 3554588 of November 13, 2006 covering goods and
services in classes 3, 7, 8, 21, 26 and 41.
The Disputed Domain Name was registered on March 23, 2004.
5. Parties’ Contentions
The Complainant provides goods and services around the World for haircare and hair extensions since 1995. Its products are available worldwide and the Complainant’s trademark GREAT LENGTHS is well known in the market of hair extensions by both consumers and hair professionals.
The Complainant has requested on April 22, 2015 the immediate blocking of the Disputed Domain Name for trademark and copyright infringement. Following the blocking of the website, the domain was sold in an auction to the Respondent on June 1, 2015.
The transfer of the Disputed Domain Name was completed on June 11, 2015.
The Disputed Domain Name consists solely of the Trademark so that the Disputed Domain Name is identical to Complainant’s Trademarks.
The Complainant asserts that Respondent’s registration and use of the Disputed Domain Name violates Complainant’s trademark rights. The Complainant alleges that is confusingly similar to and incorporates the GREAT LENGHTS Trademark, and that the only difference between the Trademark and the Disputed Domain Name is the addition of hyphen between GREAT and LENGHTS.
The Complainant alleges that Respondent has no legitimate interest in the Disputed Domain Name as the Respondent has no trademark rights and has not granted any license to use the GREAT LENGHTS Trademark. Additionally, the Respondent is not commonly known (either as a person, business or organization) for the Disputed Domain Name. Finally, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
There is no evidence of the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a corresponding name in connection with a bona fide offering of goods or services.
The Complainant also contends that the Disputed Domain Name has been registered in bad faith. In support of this assertion, the Complainant argues, in part, that the Disputed Domain Name was registered to create initial interest confusion among consumers, attracting people to the Disputed Domain Name instead of to the GREAT LENGHTS website, and that the Respondent’s use of the GREAT LENGHTS Trademarks in its domain name without a license or other authority is evidence of bad faith in itself.
The Respondent did not reply to the Complainant’s contentions and is therefore in default.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Respondent did not reply to Complainant’s contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), the consensus view of UDRP panelists is that a Respondent’s default does not automatically result in a decision in favor of the Complainant. Although, the Panel may draw appropriate inferences from a Respondent’s default, paragraph 4 of the UDRP requires the Complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
In order to obtain the transfer of the Disputed Domain Name and according to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(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;
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
At the same time, in accordance with paragraph 14(b) of the Rules:
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel finds that in this case there are no such exceptional circumstances. Consequently, failure on the part of Respondent to file a response to the Complaint permits an inference that Complainant’s reasonable allegations are true. It may also permit the Panel to infer that Respondent doesn’t deny the facts that Complainant asserts (see Harrods Limited v. Harrod’s Closet, WIPO Case No. D2001-1027; see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
The Disputed Domain Name consists of the GREAT LENGHTS Trademark with the mere addition of the generic Top-Level Domain (gTLD) “.com”.
Further, the gTLD “.com” is irrelevant in the assessment of the similarity between the Disputed Domain Name and the Complainant’s Trademarks (see A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc., WIPO Case No. D2003-0172). Indeed, the gTLD “.com” holds no legal significance since the use of a gTLD is technically required to operate the Disputed Domain Name and it does not serve to identify the source of the goods or services provided by the registrant of the Disputed Domain Name (see Statoil ASA v. Martins Ogemdi, WIPO Case No. D2015-0001).
There can be no question but that the Domain Name is confusingly similar to the Complainant’s GREAT LENGHTS Trademarks for purposes of the Policy. The Respondent’s Domain Name incorporates in its entirely the GREAT LENGHTS Trademark. The Panel is satisfied that the Complainant is the owner of a variety of registered trademarks for the GREAT LENGHTS Trademark.
As numerous prior panels have held, the fact that a domain name wholly incorporates a complainant’s registered trademark is typically sufficient to establish identity or confusing similarity for the purpose of the Policy despite the addition of a hyphen as here between the words GREAT and LENGHTS in the Disputed Domain Name. This difference is wholly immaterial (see Inter IKEA Systems B.V. v Roman Zubrickiy, WIPO Case No. D2015-0046 (a hyphen added to mark IKEA FAMILY in )).
In these circumstances, the Panel finds that the Disputed Domain Name is confusingly similar to the Trademarks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. In the present case, the Panel finds that the Complainant has made out such a prima facie case.
The Respondent is not an authorized dealer, distributor or licensee of the Complainant and has been given no other permission from the Complainant to use the Complainant’s trademarks.
There is no evidence that the Respondent has registered any trademark that consists of, or contains, the GREAT LENGHTS trademark, or any material portion thereof. The Respondent’s name does not bear any resemblance to the Disputed Domain Name nor is there any basis to conclude that the Respondent is commonly known by the Complainant. The Respondent is not an authorized dealer, distributor or licensee of the Complainant and has been given no other permission from the Complainant to use the Complainant’s Trademarks regarding to the Oki data principles (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
The Respondent is not commonly known for the Disputed Domain Name. Furthermore, the Respondent acquired the Disputed Domain Name very recently at an auction. According to an electronic correspondence with Masterfold Europe Limited, the auction regarding the domain transfer was completed on June 11, 2015. Even if the Disputed Domain Name got registered in 2004, for the purposes of the Policy, the Respondent acquisition of the Disputed Domain Name constitutes registration (see MC Enterprises v. Mark Segal (Namegiant.com), WIPO Case No. D2005-1270).
Having regard to the three suggested grounds set out in paragraph 4(c) of the Policy, on the basis of which a respondent may support a claim that it has rights or legitimate interests in a domain name, the Respondent here has not submitted any response to support such a claim.
The Respondent does not use the Disputed Domain Name in connection with a bona fide offering of goods or services nor is the Respondent making any legitimate noncommercial or fair use of the Disputed Domain Name.
In all of these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith. The requirement of “registration” in bad faith refers to the date of acquisition by the current registrant, and not to the date of the original registration (see Twenty Ones Incorporated NY Corp., supra; and HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062: “[T]he transfer of a domain name to a third party amounts to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name”)).
The Complainant finally contends that Respondent has registered and is using the Disputed Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
The Complainant alleges that the Disputed Domain Name resolves to a website offering hair extensions goods and services similar to those offered for sale on Complainant’s websites.
The Complainant has submitted evidence to the Panel showing that the Respondent is using the Disputed Domain Name with the intent to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation or endorsement of its websites or of a product or service on its websites pursuant to paragraph 4(b)(iv) of the Policy (see Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
Submitted evidence demonstrates notoriety of the Complainant’s business and GREAT LENGHTS Trademarks. The Panel finds it more likely than not that the Respondent knew about the Complainant’s Trademarks at the time of registering the Disputed Domain Name. The Panel notes that the use of the Trademarks was far prior to registration of the Disputed Domain Name (see Pfizer Inc. v. NA, WIPO Case No. D2005-0072). Furthermore, displaying a website where extensions hair is promoted, this Panel finds it likely that the Respondent is a direct competitor of the Complainant and had knowledge of the existence and use of the GREAT LENGHTS Trademarks.
Considering all the aforementioned elements, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
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 the Complainant.
Date: October 30, 2015