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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deva Concepts LLC v. Whois Privacy Protection Service, Inc. / Domain Network Solutions LLC.

Case No. D2014-0570

1. The Parties

Complainant is Deva Concepts LLC of New York, United States of America, represented by G&A Legal, APC, United States of America.

Respondent is Whois Privacy Protection Service, Inc./Domain Network Solutions LLC. of Washington and California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <devacurl.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2014. Complainant filed an amended Complaint on April 8, 2014. On April 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. Complainant filed another amended Complaint on April 14, 2014. The Center sent an email communication to Complainant on April 15, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 15, 2014. Complainant filed a further amended Complaint on April 23, 2014.

The Center verified that the Complaint together with the amended Complaints 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2014. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2014.

The Center appointed Michael A. Albert as the sole panelist in this matter on May 23, 2014. 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 is a limited liability company with its principal place of business located in New York, New York. For twenty (20) years, since 1994, Complainant has used its Deva Marks for a full line of hair care products designed for the management and styling of curly hair. The Deva Marks consist of three marks owned by Complainant: DEVACURL, a trademark, U.S. Reg. No. 4,424,795, filed February 27, 2013 and registered October 29, 2013; DEVA, a trademark, U.S. Reg. No. 2,848,344, filed March 25, 2002 and registered June 1, 2004; DEVACHAN, a service mark, U.S. Reg. No. 2,271,829, filed March 17, 1998 and registered August 24, 1999.

On February 14, 1999, Complainant launched the website at <devachansalon.com>. Complainant also owns and uses the domain name <mydevacurl.com>, to provide access to web sites that provide information about Complainant’s various hair products bearing Complainant’s Deva Marks.

The disputed domain name <devacurl.com> was registered on March 17, 2003.

5. Parties’ Contentions

A. Complainant

Since 1994, Complainant, and/or its affiliated companies, have used its well-known Deva Marks for a full line of hair care products designed for the management and styling of curly hair. All of Complainant’s hair care products currently bear Complainant’s DEVACURL house mark in order to identify Complainant as the source of these products and to identify the high quality and unique properties of Complainant’s product line.

Complainant contends that the disputed domain name is identical to Complainant’s well-known DEVACURL trademark and nearly identical, and confusingly similar, to Complainant’s other Deva Marks and <mydevacurl.com> domain name. As a result, Complainant contends, the commercial impression conveyed by the disputed domain name is that any associated curly hair-related goods or services are sponsored, endorsed, or affiliated with Complainant. Complainant contends that, in fact, it has no association with Respondent and has not granted its permission, authority, or consent to Respondent to register the distinctive DEVACURL name and mark as a domain name.

Complainant contends that Respondent cannot demonstrate any legitimate interests in the disputed domain name. Complainant contends that its first application to register the DEVA mark pre-dates Respondent’s registration of the disputed domain name. Complainant contends that its trademark filings evidence its exclusive rights in the mark in connection with goods and services covered by those registrations, and Complainant has not authorized Respondent to use its DEVACURL mark. Further, Complainant contends that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name. Moreover, Complainant contends that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Complainant contends that Respondent uses the disputed domain name to display pay-per-click links to various websites relating to curly hair from which it derives revenue through Internet advertising.

Complainant contends that the Respondent’s registration and use of the disputed domain name occurred in bad faith. Complainant contends that, because its Deva Marks are distinctive, bad faith is found because it is unlikely that the Respondent would have selected the domain name without knowing of the reputation of the mark in question. Because Respondent uses the disputed domain name to display pay-per-click links from which it derives revenue through Internet advertising, Respondent’s chances for increased revenues are in direct proportion to the amount of Internet traffic that Respondent attracts. Thus, Complainant alleges that the primary reason Respondent registered and uses Complainant’s DEVACURL mark as a domain name is to unfairly capitalize on the Internet traffic intended for Complainant’s websites.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “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”.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent 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; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Respondent provided no Response, and the deadline for so doing expired on May 15, 2014. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

Complainant provides sufficient evidence that it is the owner of the DEVACURL mark. In addition to Complainant’s registered trademark for DEVACURL, dated October 29, 2013, Complainant has contended, and Respondent has not denied, that Complainant has continuously used the distinctive DEVACURL mark in commerce on its line of hair care products since June 1, 2002 and has continuously used the related, and also distinctive, DEVACHAN mark in commerce since October, 1994. Complainant has contended, and Respondent has not disputed, that the quality of Complainant’s goods, the volume of its customers, its extensive advertisement and promotion, the significant media references to the products, the volume of traffic to Complainant’s website, and Complainant’s dedicated consumer following evidence that the DEVACURL mark is well known and is recognized as an indicator of origin exclusively identified with Complainant. From this evidence, the Panel is convinced that Complainant has demonstrated that it had common law rights in the DEVACURL mark at the time the disputed domain name was registered in 2003. The disputed domain name consists of Complainant’s DEVACURL trademark and the gTLD suffix “.com”. In such cases, UDRP panels have consistently found the domain name identical to the trademark. Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029. Therefore, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Under the Policy, paragraph 4(c), rights or legitimate interests in domain names may be demonstrated by showing that:

(i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or

(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.

Complainant contends that Respondent has no rights in the DEVACURL mark, is not commonly known by the disputed domain name, and is not making a legitimate commercial use or a noncommercial fair use of the disputed domain name. Complainant has alleged, and Respondent has not denied, that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, is not commonly known by the disputed domain name, and is seeking to benefit from Internet traffic directed to Respondent’s website associated with the disputed domain name to profit from the goodwill and established reputation of Complainant. Where pay-per-click links are based on a trademark’s value, as Complainant alleges here and Respondent has not denied, prior UDRP decisions have considered the use of a domain name to post pay-per-click links to be unfair use. See, e.g., Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

For the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the disputed domain name. Therefore, the Panel is convinced that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy paragraph 4(b)(iv), occurs when Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.

Registered in Bad Faith

When Complainant’s mark is well known, Complainant may satisfy its burden of proving that the registration was in bad faith by showing that Respondent knew or should have known about the existence of Complainant’s mark. Research in Motion Limited v. Privacy Locked LLC / Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113. Complainant contends, and Respondent does not dispute, that Complainant’s well-known product line and established reputation at the time the disputed domain name was registered indicate that Respondent knew or should have known of Complainant’s rights in DEVACURL and thus constitute evidence of registration in bad faith.

Respondent registered the disputed domain name on March 17, 2003. At that time, Complainant had been using its distinctive mark DEVACURL in commerce for almost a year and used the related distinctive mark DEVACHAN, for salons tailored to consumers with curly hair, for nearly ten years. Moreover, Respondent has not provided any reason to doubt that the disputed domain name was registered in bad faith.

Based upon the foregoing circumstances, the Panel finds that Respondent registered the Disputed Domain Name in bad faith.

Used in Bad Faith

The Panel also finds that Respondent used the disputed domain name in bad faith.

Complainant has alleged, and Respondent has not contested, that Respondent registered and used the disputed domain name to attract Internet users to Respondent’s website, which included pay-per-click links to Complainant’s own website and other websites relating to curly hair. The commercial impression conveyed by the disputed domain name is that any curly hair-related goods or services associated with it are sponsored, endorsed, or affiliated with Complainant. Accordingly, the Panel finds that Complainant has sufficiently demonstrated that Respondent attempted to attract Internet users to its site by creating a likelihood of confusion with Complainant’s trademark in DEVACURL.

For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the disputed domain name in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element of the Policy.

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 disputed domain name, <devacurl.com>, be transferred to Complainant.

Michael A. Albert
Sole Panelist
Date: May 30, 2014

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