Merle Norman Cosmetics, Inc. v. Merle-Norman

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merle Norman Cosmetics Inc. v. Merle-Norman

Case No. D2001-0474

1. The Parties

The Complainant is Merle Norman Inc. of 9130 Bellanca Avenue, Los Angeles,

California 90045, United States of America.

The Respondent is Merle-Norman of 2083 Tentt Brigadier Drake 92083, 2083 Bartolo,

Argentina.

2. The Domain Name and Registrar

The domain name at issue is:

<merle-norman.com>

and the Registrar is:

Network Solutions, Inc.

3. Procedural History

The WIPO Arbitration and Mediation Center [the Center] received the Complaint

on March 31, 2001, [electronic version] and on April 6, 2001, [hard copy]. The

Center verified that the Complaint satisfies the formal requirements of the

ICANN 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].

The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is April 19, 2001.

On April 6, 2001, the Center transmitted via email to Network Solutions, Inc.

a request for registrar verification in connection with this case and on April

9, 2001, Network Solutions, Inc. transmitted by email to the Center Network

Solutions' verification response confirming that the registrant and billing

contact is Merle-Norman of the above address and that the contact for both administrative

purposes is <merle-norman.com> of 2083 Bould Benver 32083, 2083 Palm 2083,

2083 Plmo 2083, 34212 Argentina.

Having verified that the Complaint satisfied the formal requirements of the

Policy and the Rules, the Center transmitted on April 19, 2001, to:

2083 merle-norman.com 2083 iauto

postmaster@merle-norman.com

the Notification of Complaint and Commencement of the Administrative Proceeding.

The Center advised that the Response was due by May 8, 2001. On the same day

the Center transmitted by fax and by mail copies of the foregoing documents

to:

Merle-Norman

1083 Tentt Brigadier Drake 92083

Bartolo 2083

Argentina;

Merle-Norman

2083 Alioe 632083

2083 Porrillo 2083,

Uruguay;

and to

merle-norman.com

2083 Bould Benver 32083

2083 Palm 2083

2083 Plmo 2083 34212

Argentina.

No Response was received from the Respondent by the due date of May 8, 2001.

On May 10, 2001, Notification of Respondent Default was sent to the Complainant

and to the Respondent using the same contact details and methods as were used

for the Notification of Complaint and Commencement of the Administrative Proceedings.

No reply by the Respondent to the Notification of the Respondent Default was

received.

Having received on May 22, 2001, Mr. David Perkins' Declaration of Impartiality

and Independence and his Statement of Acceptance, the Center transmitted to

the parties a Notification of Appointment of Administrative Panel and Projected

Decision Date, in which Mr. David Perkins was formally appointed as the Sole

Panelist. The Projected Decision Date was June 11, 2001. The Sole Panelist finds

that the Administrative Panel was properly constituted and appointed in accordance

with the Rules and the Supplemental Rules.

Having reviewed the communication records in the case file, the Administrative

Panel finds that the Center has discharged its responsibility under paragraph

2(a) of the Rules "to employ reasonably available means calculated to achieve

actual notice to Respondents". Therefore, the Administrative Panel shall issue

its Decision based upon the Complaint, the Policy, the Rules and the Supplemental

Rules and without the benefit of any Response from the Respondent.

4. Factual background

4.1 The Complainant

4.1.1 Complainant's Business

The Complainant manufactures and sells fine quality cosmetics, fragrances and

skin care products through a worldwide system of some 2,000 franchised studios.

The Complainant has used the MERLE NORMAN mark continuously since as early as

1931, in relation to the marketing of those goods and services, which are as

a result very well known in the United States and worldwide.

4.1.2 The Complainant's TradeMarks

The Complainant owns registered trademarks in Classes 3 and 42 for MERLE NORMAN,

both in block and stylized form, in some 23 countries worldwide. The earliest

dating from use in commerce in the United States in 1928. Of those registrations

5 are for countries in Central and South America and 2 further are for countries

in the Caribbean. Particulars of the Complainant's MERLE-NORMAN trademark registrations

are set out below.

Country

Mark

No.

Class

Filed

United States of

America

MERLE NORMAN stylized

521,472

3

February 9, 1948,

based on first use in commerce in 1929

United States of

America

MERLE NORMAN stylized

1,391,300

3

September 23, 1985,

based on first use in commerce in 1928

United States of

America

MERLE NORMAN Block

1,399,010

42

November 1, 1985

United States of

America

MERLE NORMAN Block

1,412,879

3

September 23, 1985

United States of

America

MERLE NORMAN Block

2,077,608

3

August 19, 1996

Bahrain

MERLE NORMAN Block

7790

-

March 31, 1983

Brazil

MERLE NORMAN Block

818789514

-

September 28, 1995

Mexico

MERLE NORMAN Block

417,911

-

December 23, 1991

Netherlands Antilles

MERLE NORMAN Block

9570

-

January 30, 1975

New Zealand

MERLE NORMAN Block

B196,222

-

September 19, 1989

Saudi Arabia

MERLE NORMAN Block

269/73

-

May 2, 1992

Singapore

MERLE NORMAN Block

B62,901

-

December 13, 1974

South Africa

MERLE NORMAN Block

74/5419

-

October 14, 1974

Thailand

MERLE NORMAN Block

30026

-

January 19, 1972

Canada

MERLE NORMAN Stylized

139,064

-

December 8, 1961

El Salvador

MERLE NORMAN Stylized

119,075

-

December 22, 1978

Finland

MERLE NORMAN Stylized

77,311

-

December 4, 1975

Guatemala

MERLE NORMAN Stylized

24950/141/65

-

May 10, 1972

Hong Kong

MERLE NORMAN Stylized

1650/1976

-

October 10, 1975

Hong Kong

MERLE NORMAN Stylized

204,1979

-

June 20, 1928

Indonesia

MERLE NORMAN Stylized

363774

-

October 27, 1995

Italy

MERLE NORMAN Stylized

360,586

-

September 7, 1978

Japan

MERLE NORMAN Stylized

2,365,698

-

August 31, 1989

Jordan

MERLE NORMAN Stylized

21011

-

October 5, 1983

Malaysia

MERLE NORMAN Stylized

M/70942

-

February 23, 1976

Netherlands Antilles

MERLE NORMAN Stylized

9570

-

January 20, 1975

Norway

MERLE NORMAN Stylized

72,154

-

June 16, 1977

Panama

MERLE NORMAN Stylized

19,682

-

June 28, 1975

Puerto Rico

MERLE NORMAN Stylized

21,853

-

October 11, 1978

4.2 The Respondent

4.2.1 The true identity of the Respondent is a matter for speculation. The

domain name in issue is registered in the name of Merle-Norman at an address

in Bartolo, Argentina which is also the address of the Billing Contact. The

Administrative and Technical Contact is merle-norman.com, the former with an

address in Palm, Argentina and the latter with an address in Porrillo, Uruguay.

4.2.2 The only Response to the Complainant's various attempts to contact the

Respondent at the addresses given on the WHOIS database has been an email dated

January 12, 2001, from a Victor Alonzo at victoralonzo4@yahoo.com which read:

"Please feel free to take as much legal action as you consider necessary."

This was in reply to an email from the Complainant's counsel dated January 17,

2001, requesting cancellation or transfer of the domain name in issue. That

letter was sent to the Registrant and to the Administrative Contact at the 2

addresses in Argentina, Bartolo and Palm / Plmo.

5. The Parties' Contentions

5.1 The Complainant

5.1.1 Identical or Confusingly Similar

Self-evidently the Complainant's registered MERLE NORMAN word marks are substantially

identical to the domain name in issue. The Complainant rightly states that the

existence of a hyphen is immaterial.

5.1.2 Rights or Legitimate Interests

The Complaint asserts that there is no evidence of the Respondent's use of,

or demonstrable preparations to use, the domain name in connection with a bona

fide offering of goods or services. The Complainant put the Respondent on

notice of this dispute by its emails of January 17, 2001, [referred to in paragraph

4.2 above], sent only 11 days after the Respondent registered the domain name

in issue on January 6, 2001. The domain name does not even resolve to a website

stated to be under construction.

Further, when the Complainant - having received no Response to its January

17, emails other than the one line communication from Victor Alonzo [referred

to in paragraph 4.2 above] - sent a follow up email on March 13, 2001, advising

the Respondent of its intention to pursue appropriate relief, the Respondent

continued to remain silent.

- It follows that there is no evidence of the Respondent making a legitimate

or fair use of the domain name, without intent for commercial gain to misleadingly

divert consumers or to tarnish the MERLE NORMAN trademark.

- Nor is there any evidence that the Respondent has even been known by the

domain name in issue.

- Finally, the Complainant has not authorized or otherwise licensed the Respondent

to use the MERLE NORMAN name or mark, whether in relation to the Complainant's

products or otherwise. In fact, the Complainant actively promotes its goods

and services on its website located at <merlenorman.com>. Further,

the Complainant has never permitted even its authorized licensees to operate

independent websites using the MERLE NORMAN mark, much less as part of a domain

name.

- Thus, the Complaint asserts that none of the circumstances set out in paragraph

4(c) of the Policy which demonstrates rights or legitimate interests in the

domain in issue are present in this case.

5.1.3 Registered and Used in Bad faith

- In an article by Anthony De Bartolo published in the Chicago Reader

on September 1, 2000, reference is made to a Victor Alonzo of Colombia as the

Registrant of the <richardjdaley.com> domain name offered for sale

at US$25,000.00. The current registrant of that domain name is shown in the

WHOIS database as having an address at Brigadier Drake 9, Bartolo 34212, Argentina.

This is, of course, very similar to the address of the registrant of the domain

name in issue [see paragraph 3 above]. Given Victor Alonzo's reply of January

18, 2001, to the emails of January 17, 2001, from the Complainant's attorneys,

the evidence points towards the registrant of the two domain names being one

and the same person.

- It is now settled that under the Policy bad faith use can occur even in the

context of a passive, inactive holding of a domain name [The Telstra

case, WIPO Case No. D2000-0003]. The circumstances

suggested in Telstra to be relevant to bad faith in that context were:

- the well-known and widely known status of the Complainant's trademarks;

- the lack of any evidence of rights or legitimate interests;

- the Respondent taking active steps to conceal his true identity, believed

to be Victor Alonzo;

- the consequent provision of false information in breach of the Registration

Agreement; and

- the difficulty, in the circumstances, of envisaging any use of the domain

name in issue that would be legitimate.

- The Complainant concludes that the Respondent could have had only two possible

intentions for registering the domain name in issue. Either, selling

rights to the Complainant for an amount in excess of Respondent's out of pocket

expenses; or eventually attempting to attract Internet users for commercial

gain by creating confusion as to source, sponsorship, affiliation, or endorsement

of the Respondent's website. As to the former, Victor Alonzo is already reported

as offering for sale another domain name for a sum well in excess of his costs

directed related to that domain name, namely US$25,000.00 [see paragraph 4.2.2

above].

- Thus the Complainant avers that circumstances evidencing bad faith exist

under paragraphs 4b(i) and (iv) and, additionally, that the alternative indicia

of bad faith proposed in Telstra case are also present.

6. Discussion and Findings

6.1 The policy paragraph 4(a) provides that to succeed in obtaining the cancellation

or transfer of a domain name the Complainant must satisfy each of the

following requirements, namely:

- that the domain name is identical or confusingly similar to a trademark or

service mark in which the Complainant had rights; and

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

domain name; and

- the domain name has been registered and is being used in bad faith.

6.2 Paragraph 4(c) of the Policy sets out circumstances which, in particular

but without limitation, if found by the Panel to be present shall demonstrate

the Respondent's rights or legitimate interests to the domain name for the purposes

of paragraph 4a(ii) of the Policy.

6.3 Paragraph 4(b) of the Policy sets out circumstances which, again in particular

but without limitation, if found by the Panel to be present shall be evidence

of the registration and use of a domain name in bad faith.

6.4 Identical or Confusingly Similar

The Complainant succeeds in satisfying the first requirement of paragraph 4a(i)

of the Policy that the domain name in issue is identical to the Complainant's

MERLE NORMAN trade mark. The presence of a hyphen is, the Panel agrees, immaterial.

6.5 Rights or Legitimate Interests

In the absence of a Response, the Panel has nothing before it to challenge

the assertions made by the Complainant, all of which in the circumstances set

out in the Complaint and certain of the documents appended to it seem to the

Panel to be well founded. Accordingly, the Panel finds that the Complainant

has also satisfied the second requirement under paragraph 4a(ii) of the Policy.

6.6 Registered and Used in Bad Faith

The absence of a Response itself has been held to be indicia of bad faith.

Lack of rights or legitimate interests in the domain name has been held to be

another. When these are added to the catalogue of circumstances presented by

the Complainant in paragraph 5.1.3 above, the Panel has no hesitation in finding

that the Complainant has satisfied the dual requirements of paragraph 4a(iii)

of the Policy. The Panel agrees that the circumstances of this case fall very

much into the same category as those found by the panel in Telstra.

7. Decision

In the light of all the foregoing circumstances, the Panel decides that the

Complaint satisfies all the requirements of paragraph 4(a) of the Policy. Accordingly,

the Panel directs that the domain name <merle-norman.com> be transferred

to the Complainant.

David Perkins

Sole Panelist

Dated: June 7, 2001

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