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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Alberto-Culver Company v Balata.com LLC [2006] DRS 3816 (12 September 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3816.html Cite as: [2006] DRS 3816

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Nominet.uk Dispute Resolution Service

DRS 03816

Alberto-Culver Company –v- Balata.com LLC

Domain Name:

Decision of Independent Expert

1. The Parties

The Complainant

The Complainant is Alberto-Culver Company of USA, represented by Messrs. Roberts Mlotkowski & Hobbes.

The Respondent

The Respondent is Balata.com LLC of Israel. The Respondent is not represented.

2. The Domain Name

The disputed domain name is ("the Domain Name").

3. Procedural Background

This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure ("the Procedure") and the Nominet UK Dispute Resolution Service Policy ("the Policy").

The Complaint entered into Nominet's system on 6 July 2006 and was validated on 12 July 2006. A Response was received on 26 July 2006. No Reply was filed. Mediation not being successful, the Complainant paid the relevant fee on 22 August 2006 and the Complaint was referred to me on 29 August 2006 for a Decision.

4. Outstanding Formal/Procedural Issues

There are two such issues in this case.

First, the Response in this case is extremely brief and no supporting documentation is annexed to it. In these circumstances, on 31 July 2006, Nominet sent a standard letter to the Respondent (which is sent in the case of all responses that are less than 15 lines long) advising it to ensure that its Response explained its position properly and was adequately supported by documentary evidence. The Respondent made no further submissions as a result of this letter.

Secondly, on 22 August 2006, the Complainant contacted Nominet to indicate that it wished to make a non-standard submission in this case. The Complainant stated:

"Complainant wishes to submit additional evidence of Respondent's bad faith that it just became aware of on August 22, 2006. Specifically, Complainant wishes to enter evidence that Respondent has registered an additional domain name that infringes another famous trademark owned by the Complainant."

Under paragraph 13(b) of the Procedure, the issue of whether to have regard to a non-standard submission is a matter in the sole discretion of the Expert. In this case, having regard to the nature of the submission proposed, I am not of the view that any such submission would be likely materially to affect my Decision in the matter. I have therefore declined to receive and take account of the submission.

5. The Facts

The Domain Name was registered by the Respondent on 4 September 2004.

On 12 July 2006, the Domain Name resolved to a website that provided links to other websites offering cosmetic and hair care products. The website also stated "This Domain is for Sale".

6. The Parties' Contentions

The Complaint

The Complainant's contentions as set out in the Complaint may be summarised as follows:

Rights

(1) The Complainant is the owner of over 400 registrations and applications for the trade mark VO5, covering virtually every country in the world. (The Complainant does not distinguish in the Complaint between registrations and applications, although it provides supporting documentation from which this is apparent.)

(2) The Complainant has used the mark VO5 as a unique identifier for a variety of hair care products since 1939. It now provides more than 32 individual products under that mark. The Complainant's US sales in the past year were in the region of $153 million, with further non-US sales in the region of $168 million.

(3) The Complainant has spent approximately $42 million in each of the past five years in promoting and advertising the VO5 mark with the object of ensuring customer recognition of it.

(4) In consequence of the Complainant's use and promotion of the mark, it has attained the status of a world-famous mark and is entitled to the protection afforded to such marks.

(5) It is highly unlikely in the circumstances that the Respondent was unaware of the Complainant's trade mark.

(6) The Complainant has been vigilant to protect its rights in the mark both by registering trade marks and by taking action in cases of infringement.

(7) The Complainant owns the domain name and intends to use the same for the purposes of its UK business.

The Complainant provides substantial documentary evidence in support of its submissions summarised above.

Abusive Registration

(8) The Domain Name (ignoring the formal suffix) is confusingly similar, and visually virtually identical, to the Complainant's VO5 mark. The only difference is that the "O" has been replaced with a "0" (zero). In the circumstances, this is a clear case of "typosquatting".

(10) The Respondent appears to be in the business of typosquatting and has received adverse decisions in the following cases:

Boscolo Tours S.p.A –v- Balata Inc. WIPO Case No. D2005-0970

Marionnaud Parfumeries –v- Balata Inc. WIPO Case No. D2005-0291

Nominet DRS Case No. 02370, domain name

Nominet DRS Case No. 02455, domain name

Nominet DRS Case No. 02462, domain name

Nominet DRS Case No. 02863, domain name

Nominet DRS Case No. 03470, domain name

(The Complainant does not address the fact that the respondent in the WIPO cases is Balata Inc rather than Balata.com LLC.)

(11) In the present case, it is a virtually inescapable conclusion that the Respondent registered and is using the Domain Name for a bad faith reason, eg. to profit from a sale of the name and/or to confuse internet users seeking to find the Complainant or its products. These actions constitute cybersquatting.

(12) The Respondent has no legitimate rights in the term V05 or any variation thereof. There is no credible evidence that the Respondent operates under or is known by that name, that it has used any trade marks involving that name or has applied for any trade mark registrations.

(13) The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, nor is it making legitimate non-commercial or fair use of the name. Rather, it is to be inferred that the Respondent registered the Domain Name in bad faith and in full knowledge of the rights of the Complainant.

The Complainant seeks a transfer of the Domain Name.

The Response

As stated above, the Response is this case is short. The Respondent states:

"We bought this domain name V05.CO.UK in good faith for business use not having your client in mind (but the generic combination of V and 05). The redirection to the domain park is temporary until the web site we are working on will be ready (which includes Vacation information). The term "vo5" is a trademark about hair, but our site subject is on travel and vacation, therefore their is no trademark violation. So the fact that the complainant has a website on v05.net can't prevent us from using it for business purposes."

7. Discussion and Findings

Relevant Provisions of the Policy

Under paragraph 2 of the Policy:

"(a) A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to [Nominet], according to the Procedure, that:

(i) the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

(ii) the Domain Name, in the hands of the Respondent, is an Abusive Registration.

(b) The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities."

However, under paragraph 3(c) of the Policy:

"There shall be a presumption of Abusive Registration if the Complainant proves that [the] Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4(c)).

Paragraph 4(c) states:

"If paragraph 3(c) applies, to succeed the Respondent must rebut the presumption by proving in the Response that the Registration of the Domain Name is not an Abusive Registration."

Under paragraph 1 of the Policy the term "Rights":

"includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business."

The term "Abusive Registration" is defined in paragraph 1 of the Policy as referring to a Domain Name which either:

"(i) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or

(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be evidence that a Domain Name in the hands of the Respondent is an Abusive Registration. Those factors include the following:

"i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

       

A. for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

         B. as a blocking registration against a name or mark in which the Complainant has Rights; or

       

C. for the purpose of unfairly disrupting the business of the Complainant;

     

ii. Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;

     

iii. The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent  is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern…"

Paragraph 4 of the Policy sets out a non-exhaustive list of factors that may be evidence that a Domain Name in the hands of the Respondent is not an abusive registration. Those factors include, under paragraph 4(a)(i), that:

"Before being aware of the Complainant's cause for complaint (not necessarily the "complaint" under the DRS), the Respondent has:

       

A. used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services…"

A further possible factor, under paragraph 4(a)(ii), is that:

       "The Domain Name is generic or descriptive and the Respondent is making fair use of it."

Rights

While the Complainant's trade mark applications, as opposed to registrations, are irrelevant, the Complainant has nevertheless demonstrated that it is the owner of numerous registrations for the trade mark VO5 throughout the world. I also consider that the Complainant's extensive use of the mark since 1939 and its recognition worldwide invests it with the status of a world-famous mark. The Domain Name (ignoring the formal suffix .co.uk) is confusingly similar to Complainant's trade mark and indeed identical to it but for the substitution of the character "O" with a "0" (zero). Accordingly, I find for the purposes of paragraph 2(a)(i) of the Policy that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name.

Abusive Registration

In this case, the Complainant has referred to a number of Nominet DRS decisions in which the Respondent has been found to have made Abusive Registrations. Since three or more of these Decisions were made within two years prior to the date of the Complaint, paragraphs 3(c) and 4(c) of the Policy come into play. Accordingly, there is a presumption, rebuttable by the Respondent, that there is an Abusive Registration in this case.

In the circumstances, it is appropriate first to examine the Respondent's case. In summary, the Respondent says that the combination of characters comprising the Domain Name is generic, and that the Respondent intends to use the Domain Name to resolve to a website concerning vacations and travel. This would not infringe the Complainant's trade mark rights, which relate to hair care products.

In order to fall within paragraph 4(a)(i)(A) of the Policy, the Respondent would need to establish that it has used, or made demonstrable preparations to use, the Domain Name in connection with a genuine offering of goods or services. While the Respondent asserts that it intends to use the Domain Name in connection with a website relating to vacations and travel, it has provided no evidence whatsoever of any such use of the name or preparations in this regard. On the contrary, on 12 July 2006 the Respondent was using the Domain Name to resolve to a website that offered links to other websites offering cosmetic and hair care products and stated "This Domain is for Sale".

So far as paragraph 4(a)(ii) of the Policy is concerned, I do not accept that the Domain Name is generic. Certainly the operative part comprises a three-character combination and in many circumstances such combinations are generic in nature. In this case, however, the Complainant has clearly established that it has trade mark rights in the combination (or a mark that it virtually identical thereto) and significant worldwide goodwill that attaches to that mark.

Nor do I accept that the Respondent's use of the mark is "fair". I infer from both the facts of this case and the Respondent's dispute history (to which paragraphs 3(a) (iii) and 3(c) and the Policy require me to have regard) that the Respondent, being aware of the Complainant's trade mark rights, registered and has used the Domain Name in bad faith. Specifically, I infer that some or all of the circumstances contemplated by paragraphs 3(a)(i) and (ii) are present in this case.

Accordingly, the Respondent has failed to rebut the presumption set out in paragraph 3(c) of the Policy. I find that the Respondent registered and has used the Domain Name in a manner which was unfairly detrimental to, or took unfair advantage of, the Complainant's Rights and that the Domain Name is therefore, in the hands of the Respondent, an Abusive Registration.

8. Decision

The Complainant has established on the balance of probabilities that it has Rights in a name or mark that is identical or similar to the Domain Name. The Respondent has failed to rebut the presumption present in this case that the Domain Name, in the hands of the Respondent, is an Abusive Registration. Accordingly this Complaint succeeds and I direct that the Domain Name be transferred to the Complainant.

Steven A. Maier

12 September 2006