HQUK Limited v. Head Quarters

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

HQUK Limited v. Head Quarters

Case No. D2003-0942

1. The Parties

The Complainant is HQUK Limited, Berkley Square, London, United Kingdom of Great Britain and Northern Ireland, represented by Berwin Leighton Paisner Solicitors of London, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Head Quarters, Cheltenham, Gloucestershire, United Kingdom of Great Britain and Northern Ireland, represented by the Waldrons Solicitors of Brierly Hill, West Midlands, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <hq-hair.com> (the "Domain Name")

is registered with Tucows Inc.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 26, 2003. On November 27, 2003, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On November 27, 2003, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

3.2 The Center verified that the Complaint satisfied 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2003.

3.4 The Respondent did not submit a response by December 18, 2003. Accordingly, the Center notified the Respondent’s default on December 22, 2003.

3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on December 31, 2003. 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.

3.6 On January 6, 2004, Waldrons, the Respondent’s legal advisers, sent a letter to the Center. In that letter Waldrons explained that separate proceedings had been commenced under the Nominet Dispute Resolution Service in relation the domain name <hq-hair.co.uk>. A response in relation to the Complaint in those proceedings had been forwarded to Nominet UK, and a copy of that response (the "Nominet Response") was enclosed. However, due to "an oversight on [Waldrons] part", they had "failed to notice that there were separate dispute resolution proceedings instigated [under the UDRP]". Waldrons now wanted to review the Complaint and "formulate [its] response" and sought "leave to submit [its] client’s response late".

3.7 On January 8, 2004, and having reviewed the contents of the Respondent’s Solicitors letter, the Panel made an order (Procedural Order No.1) the operative terms of which were as follows:

"(1) The Respondent shall by no later than 5:30 pm GMT on Friday January 16, 2004:

(i) submit any Response that it wishes the Panel to consider in this matter; and

(ii) submit a document setting out its detailed reasons why the Panel should grant an extension of time for submission of a Response and/or why the Panel should consider and take notice of that Response in coming to its decision in this matter.

(2) At the same time as submitting any document in accordance with paragraph (1)(i) of this Order, the Respondent shall forward a hard copy of the same complete with copies of any document annexed thereto direct to the Sole Panelist. Save for the purposes of compliance with this paragraph of this Order, paragraph 8 of the UDRP Rules shall continue to apply.

(3) The Complainant may, if so advised, submit by no later than 5:30 pm GMT on Friday January 23, 2004, a statement limited to the matters set out in any document submitted by the Respondent in accordance with paragraph (1)(ii) of this Order.

(4) The Panel will address in its decision the question of whether it should grant an extension of time for submission of a Response and/or it can and should consider and take notice of any Response submitted by the Respondent.

(5) The Panel hereby postpones issuing a decision in this proceeding until Friday February 6, 2004."

3.8 The Procedural Order also provided as follows:

"The Panel brings paragraph 5(b)(ix) of the UDRP Rules

to the attention of the Respondent. Insofar as the Respondent makes in any Response

any assertion of fact in respect of which it can be reasonably expected that

documentary evidence exists, and no documentary evidence is annexed to the Response

in support of that fact, the Panel may draw an adverse inference therefrom."

3.9 No Response was filed by the Respondent by January 16, 2004, in accordance

with the Procedural Order No.1. Instead, Waldrons unilaterally sent a letter

direct to the Panel dated January 21, 2004. In that letter the Respondent’s

Solicitors thanked the Panel "for the extension of time the [Panel] granted

to [their] client for submission of any response", but stated that due

to "escalating costs" they would not be making any further submissions.

They therefore asked that the Panel "take into account, insofar as it able

to do so in connection with these proceedings, the response that [their client]

made to the domain name <hq-hair.co.uk>".

3.10 On January 27, 2004, solicitors for the Complainant sent a fax to the

Center objecting to the Panel taking into account the contents of the Nominet

Response. However, the Complainant’s solicitors also went to argue that insofar

as the Panel decided that it could take into account the Nominet Response then

"in the interests of fairness" the Panel should take into account

the Complainant’s Reply in those proceedings (a copy of which was enclosed).

Further, the Complainant sought to draw to the attention of the Panel that a

trade mark application relied upon by the Complainant had "now proceeded

to the registration stage".

4. Factual Background

4.1 The Complainant is a private limited company incorporated in the United Kingdom

on June 5, 1997.

4.2 Whilst the Complainant has only been in existence for 6 ½ years, the Complainant’s

business was founded in the 1960’s and has operated under the name HQ "for

many years" including since 1991, through an HQ Hair salon in London.

4.3 The Complainant registered the domain name <hqhair.co.uk> on January 19, 1999,

and the domain name <hqhair.com > on October 21, 1999.

4.4 The Complainant launched its Internet brand HQhair in February 1999. "www.hqhair.com"

has become a market leading website for hair and beauty products with a substantial

turnover and is highly regarded within the hair and beauty industry.

4.5 The Complainant has taken an exclusive licence of the rights in relation

to the trademark applications made by its "sister company HQHairdressing

Limited" for the following community trade marks (the "Trade Mark

Applications"):

- "HQHAIR" in classes 26 and 35, No. 2,046,977- application date

January 19, 2001;

- "HQBEAUTY" in class 35, No. 2,782,761- application date July 17,

2002 ;

- "HQ" in classes 35 and 44, No. 2,901,114 - application date October 17, 2002.

4.6 The Respondent registered the Domain Name on April 22, 2002.

5. Procedural Arguments

5.1 It is convenient before setting out the various submissions of the parties,

to deal with the question of whether the Panel should take into account the

Nominet Response and the contents of the Complainant’s letter of January 27,

2004.

5.2 In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO

Case No. D2003-0780 and 1099 Pro, Inc. v. Convey Compliance Systems,

Inc., WIPO Case No. D2003-0033 panels have

held that late responses should be disregarded "absent good cause".

5.3 Paragraph 10(c) of the Rules states as follows:

"The Panel shall ensure that the administrative proceeding takes place

with due expedition. It may, at the request of a Party or on its own motion,

extend, in exceptional cases, a period of time fixed by these Rules or by the

Panel."

5.4 At first sight the requirement under 10(c) of an exceptional case might

appear stricter than the requirement to show good cause, but the Panel doubts

that this is so. To ask a Panel to consider a Response that has been served

late is essentially tantamount to a retrospective request for an extension of

time. Also there seems little point in applying one test for whether an extension

of time should be granted but where that request has been denied and a Response

served late going on to apply a different test as to whether the Response shall

be accepted.

5.5 Further, the comments of the majority of the panelists in 1099 Pro,

Inc. v. Convey Compliance Systems, Inc., WIPO

Case No. D2003-0033 would seem to suggest that panels are now likely to

take a stricter view on whether a party has shown good cause than might have

been the case when the UDRP process was still relatively new.

5.6 How then is the test (whether it be an exceptional case or showing good

cause) to be applied in this case? The reasons given by the Respondent as to

why it failed to serve a Response by December 18, 2003, are, to say the least,

unusual. The Panel is unaware of any case where the failure was due to legal

advisers to the Respondent confusing separate proceedings in relation to separate

domain names under the Policy and the Nominet Dispute Resolution Service. This

was a gross and basic error for which the Respondent’s solicitors accepted responsibility.

It, therefore, looked as if the Panel might have to answer the question whether

the Respondent should be forced to suffer the consequences of the mistakes of

his legal advisers.

5.7 In the event, for reasons that the Panel now set out, a decision on this

issue is not necessary. By means of Procedural Order No.1 the Panel ordered

that the Respondent should put in any response upon which it wished to rely

by January 16, 2004. It did not do so. Instead it sent a letter on January

21, 2004, in the terms described earlier in this decision. The Panel is not

prepared to accept the letter of January 21, 2004, with its reference back to

the Nominet Response enclosed with its letter of January 6, 2004, as a Response

for the purposes of these UDRP proceedings. The reasons for this are as follows:

(a) The letter was procedurally defective as a Response in that it did not

comply with the requirements of paragraph 5 of the Rules. Further it constituted

a unilateral communication with the Panelist contrary to paragraph 8 of the

Rules.

(b) The arguments put forward to justify reliance upon the Nominet Response

are unpersuasive. The Respondent claimed that the arguments in Nominet Proceedings

and UDRP proceedings are essentially identical. They are not. By way of example,

Nominet requires a Claimant to show either abusive registration or use, whereas

the Policy requires registration and use in bad faith. Perhaps it could be said

that the Panel could work its way through the Nominet Response and take into

account those assertions of fact or arguments that may be relevant to the UDRP

proceedings. However, this asks far too much of the Panel. Essentially, it involves

a Respondent asking the Panel to examine material much of which is not relevant

to the issues before it and then to construct for the Respondent what the Respondent’s

case may be from that material. The Panel is not prepared to do that in this

case. The Respondent may be anxious to avoid costs, but this does not justify

requesting the Panel to act as its unpaid legal advisor.

(c) Even if the letter and the Nominet Response referred to in that letter

could be treated as a response for the purposes of the Policy, no explanation

is given as to why the letter setting out the Respondent’s position was not

served by January 16, 2004, as required by Procedural Order No. 1. Even if the

Respondent’s solicitor’s initial error constituted good cause or an exceptional

case to justify service of a late Response as at January 6, 2004, (the date

of Waldrons' initial letter) no good cause or exceptional case was put forward

to justify the failure to do so by January 16, 2004. To say in this respect

that the Panel was in possession of the Nominet Response prior to January 16,

2004, is no answer here. The Respondent did not ask the Panel to treat this

document as the Response under the Policy until January 21, 2004.

It was merely provided as evidence in connection with Waldrons’ earlier error

and, indeed, on its face did not even relate to the Domain Name.

5.8 It may be that the Respondent considers this to be harsh. The Respondent

was not responsible for Waldrons’ initial mistake nor (the Panel assumes) for

Waldrons’ false assumption that the arguments in Nominet proceedings and UDRP

proceedings are "essentially identical". However, if the Respondent

believes that the timely filing of a properly formulated Response in this matter

would have made any difference to the outcome of this case, this is a matter

for the Respondent to take up directly with its solicitors.

5.9 The Panel should perhaps add for the sake of completeness that even if

it had decided to take into account the Nominet Response, it would have not

have been minded to take into account the reply of the Complaint also served

in the Nominet proceedings. Whilst the assertion by the Complainant that it

should do so "in the interests of fairness" may seem superficially

attractive, it is in the Panel’s view misconceived. These are not Nominet proceedings

and consideration by the Panel of the Nominet Response would have not made them

so. Therefore, in essence the Complainant’s request constituted a request under

the Policy to be allowed to file a supplemental submission. The Panel would

not have been minded to grant that request. In coming to any conclusion on this

issue the Panel takes into account the following comments of the panel in the

Digital Kitchen decision:

"As is by now well-established, the Rules do not provide any right of

reply. Parfums Christian Dior S.A. v. Jadore, WIPO

Case No. D2000-0938 (November 3, 2000). Although supplemental submissions

may be accepted to address new legal developments, see, e.g., Pet Warehouse

v. Pets.Com, Inc., WIPO Case No. D2000-0105

(April 13, 2000), or to rebut unexpected factual assertions, see, e.g., Pacific

Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO

Case No. D2001-0237 (June 11, 2001), they should be allowed sparingly."

5.10 Somewhat different is the Complainant solicitors’ late request that the

Panel take notice of the fact that its client’s CTM application 002046977 (i.e.

HQhair) had "proceeded to the registration stage". However, for reason

that are explained later in this decision, the Panel feels no need to take this

fact into account in coming to its decision. In the circumstances, the Panel

takes no account of this fact.

6. Parties’ Contentions

Complainant

6.1 The Complainant contends as follows:

Identical or Confusingly Similar to a trade mark in which it has rights

6.2 The Complainant relies upon its exclusive licence in the Trade Mark Applications

and its "rights in the HQ Brand". The Domain Name is confusingly similar

to the Trade Mark Applications, the addition of the hyphen between "hq"

and "hair" being not sufficient to prevent that confusing similarity.

6.3 The logo of the Respondent, shown at the top right hand corner of the Respondent’s

home page is also confusingly similar to "the Complainant’s marks".

No rights or Legitimate interests / Registered and Used in Bad Faith

6.4 The Respondent registered the Domain Name after the Trade Mark Applications

were published and the Complainant had established extensive goodwill in the

"HQhair name". Therefore, the Respondent has no right or legitimate

interest in respect of the Domain Name.

6.5 The distinctive nature of the "hqhair mark", in particular press

coverage at the time the Domain Name was registered, means that the Respondent

must have known of the Trade Marks and the Complainant’s business at the time

of registration of the Domain Name. This evidences bad faith.

6.6 Further, the registration of the Domain Name and using it to point to a

website offering similar services to the Complainant, had the purpose of disrupting

the business of the Complainant by creating a likelihood of confusion with the

Complainant’s business, constituting bad faith.

6.7 Internet users will believe that the Complainant endorses or is in some

way connected with the Respondent. Although the Respondent is using the Domain

Name in respect of offering goods and services, it is not making a legitimate

non-commercial or fair use of the site. The Respondent has chosen the Domain

Name to capture the Complainant’s Internet audience.

6.8 In connection with these assertions the Complainant relies upon the decisions

in NIKE, Inc. v. Khoo Lye, NAF Case No. FA0110000100180, Gorstew Limited

and Unique Vacations, Inc. v. All-Inclusive Vacations, NAF Case No. FA0005000094929

and Travel Services, Inc. v. tour Coop of Puerto Rico, NAF Case

No. FA0001000092524

6.9 The Complainant requests that the Administrative Panel issue a decision

that the Domain Name be transferred to the Complainant.

Respondent

6.10 The Respondent has made no formal substantive reply to the Complainant’s

contentions.

7. Discussion and Findings

Introduction

7.1 The Panel has reviewed the Complaint together with its annexures. In light

of this material, the Panel finds as set out below.

7.2 The Panel does not find that there are any exceptional circumstances within

paragraph 5(e) of the Rules so as to prevent this Panel determining the Complaint.

Details of these proceedings have been served in accordance with the relevant

requirements set out in the Rules.

7.3 It is incumbent on the Complainant to make out its case in all respects

under the Rules set out in paragraph 4(a) of the Policy. However, under paragraph

5(e) of the Rules if the Respondent does not submit a response and in the absence

of exceptional circumstances, "the panel shall decide the dispute based

upon the Complaint". Further, under paragraph 14 of the Rules where a party

does not comply with any provision of the Rules, the panel "shall draw

such inferences therefrom as it considers appropriate".

A. Identical or Confusingly Similar

7.4 Under paragraph 4(a)(i) of the Policy, the Complainant must show that the

Domain Name is identical or confusingly similar to a trade mark in which it

has rights.

7.5 The Complainant relies upon its exclusive licence of three applications

for the registration of the Community trade marks ("CTM"s) "Hqhair",

"HQbeauty" and "HQ". Contrary to the Complainant’s assertion

in the Complaint that the Domain Name was registered after the Trade Mark Applications

were published, it is clear that the last two of these applications were made

after the registration of the Domain Name.

7.6 This raises no less than three separate questions, none of which have a

straight forward answer, i.e.:

(i) Is an exclusive licence of a CTM sufficient rights in a trade mark for

the purposes of paragraph 4(a)(i)?

(ii) Is a CTM application a trade mark for the purposes of paragraph 4(a)(i)?

(iii) Does it make any difference to the answer to question (ii) if the trade

mark was applied for after the date of registration of the Domain Name?

7.7 The question of whether a licence of a trade mark provides sufficient rights

in a trade mark for the purposes of paragraph 4(a)(i) is one that has been considered

in a number of UDRP decisions. These include L'usine Nouvelle v. Halami Philippe

Tropic Telecom WIPO Case, No. D2000-0983,

Lycos Europe N.V. v. RegionCo, WIPO

Case No. D2000-1102, NBA Properties, Inc. v. Adirondack Software

Corporation, WIPO Case No. D2000-1211,

Limco, Inc. and Too, Inc. v. Pat Mintash d/b/a Mintash Enterprises, WIPO

Case No. D2001-0175, and HBP, Inc. v. Front and Center Tickets, Inc.,

WIPO Case No. D2002-0802.

It is difficult to fully reconcile these decisions, but it is noticeable

that where the complainant has shown that it is an exclusive licensee

of the relevant trade marks this has tended to be sufficient.

7.8 Looking at this matter from first principles it is noticeable that the

Policy does not state that the Complainant must be the registered owner of the

trade mark. Rights in the trade mark is sufficient. But what level of

rights short of registered ownership is necessary? What is a trade mark for

the purposes of the Policy may vary from jurisdiction to jurisdiction (see the

comments in relation to this issue by the Panel in Sibyl Avery Jackson v.

Jan Teluck, WIPO Case No. D2002-1180

in the context of unregistered trade marks). It therefore seems to the Panel

that what is sufficient rights in a trade mark may similarly vary dependent

upon the type and nature of the trade mark relied upon.

7.9 Here the relevant marks are CTMs. Article 22(3) of the Community Trade

Marks Regulation (40/94/EEC) provides as follows:

"Without prejudice to the provisions of the licensing contract, the licensee

may bring proceedings for infringement of a community trade mark only if its

proprietor consents thereto. However, the holder of an exclusive licence may

bring such proceedings if the proprietor of the trade mark, after formal notice,

does not bring infringement proceedings within an appropriate period"

7.10 Does the grant of a licence either alone or in conjunction with the rights

afforded by Article 22 grant the licensee sufficient rights for the Policy?

If the rights under Article 22 are significant here, must the licensee also

show that it has been granted the right to pursue infringement claims (or perhaps

by analogy UDRP proceedings) or alternatively that it is an exclusive licensee

who has given "formal notice" to the trade mark owner and that an

"appropriate period" has now passed? It seems not unreasonable to

assume that in this case, given the close connection between the trade mark

application owners and the Complainant (they are described as "sister companies"),

the entity that made the Community Trade Mark Applications has consented to

these UDRP proceedings. However, it is no more than an assumption given that

no claim to this effect has been made by the Complainant.

7.11 As to the question whether a trade mark application is sufficient to constitute

a trade mark for the purposes of the Policy, yet again there is uncertainty.

In Netdoktor A/S v. Jens Nielsen, WIPO

Case No. DBIZ2002-00109 the panel decided that the pending United Kingdom

trade mark application for NETDOCTOR.CO.UK was to be disregarded, on the grounds

that a trade mark application did not give the applicant any trade mark rights

before a trade mark registration is granted. In contrast, in La francaise

des Jeux v. L Welsr, WIPO Case No. D2002-0305,

the Complainant sought to rely on two CTM applications and the Panel held

that the applications for CTMs revealed no obvious grounds for denying the registrations

and as such the trade mark applications were considered sufficient for the purposes

of the Policy.

7.12 Again, looking at this question from first principles, in the United Kingdom,

where a trade mark is registered it is deemed to have been registered from the

date of the filing of the application (see Ss 9(3) and 40(3) of the Trade Marks

Act 1994). Therefore, an applicant for a UK trade mark has rights in that trade

mark from the date of application; albeit rights that are conditional upon a

future event that has retrospective effect. Are these sufficient rights for

the Policy? Similarly, in the case of CTMs, Article 9(3) of the Community Trade

Marks Regulation grants certain rights of compensation from the date of publication

of the CTM if that mark should subsequently be granted.

7.13 However, if these are sufficient trade mark rights for the purposes of

the Policy, how is a panel to decide complaints the validity of which depend

upon whether or not a registration will subsequently occur? So far as trade

mark litigation in the United Kingdom is concerned, the problem is avoided by

section 9(3) of the Trade Marks Act 1994, which expressly provides that no proceedings

can be commenced until the date of registration. Similarly, the Community Trade

Mark Regulation provides that no court may decide upon the merits of a claim

for compensation until the registration is published (Article 9(3)). However,

no equivalent provisions exist in the Policy.

7.14 The approach of the panel to this problem in La francaise des Jeux

appears to have been that in the absence of any argument or obvious

reason why that the applications would not proceed to grant, then it could be

assumed that they would. However, the Panel finds this approach problematic.

Even if a respondent need only show an arguable case that the application will

fail, a panel will still risk being drawn into an argument as to the merits

of the application that it is likely to be ill-placed to deal with.

7.15 Indeed the difficulties and dangers of asking a panel to make a decision

in such a case were illustrated for the Panel when it conducted a cursory online

trade mark registry search in respect of the Trade Mark Applications shortly

prior to issuing this decision. The results of this search suggested that two

of the Trade Mark Applications either had been or were still subject to opposition

proceedings, a fact that had not been alluded to or mentioned in the Complainant’s

Complaint.

7.16 The last question that arises here is that, if an application for a trade

mark is deemed reliable for the purposes of establishing rights in a trade mark

under the Policy, then can an application for a trade mark after the date of

the registration of the domain name also be relied upon? Essentially the question

here becomes no different from that which arises when a complainant relies upon

a registered trade mark that was applied for after the registration of the relevant

domain name. As is discussed in Joe Cole v. Dave Skipper, WIPO

Case No. D2003-0843, there are a number of cases that suggest

that since there is no time restraint in paragraph 4(a)(i) of the Policy

and therefore the fact that the trade mark post dates the registration does

not matter (although it may be highly relevant to the separate question of bad

faith). However, this is not the only possible approach.

7.17 Therefore, the Complaint potentially raises a large number of difficult

questions on the scope of trade mark rights under the Policy. However, it is

not necessary to consider these questions further in this case. Neither is it

necessary for the Panel to consider whether it should take into account the

Complainant’s late submission that CTM application 00204677 has now proceeded

to registration. The reason for this is that it is reasonably clear that the

Complainant does not just rely on the Trade Mark Applications but also on its

common law rights in the "HQhair brand" arising out of its established

extensive goodwill in the HQhair name.

7.18 The phraseology used by the Complainant in its Complaint is somewhat erratic

and inconsistent. On the question of confusing similarity, for example, it refers

only to the "Complainant’s trade marks in annex 2". This is a reference

only to the Trade Mark Applications and not to any common law rights in the

name HQhair. Nevertheless it is clear from statements elsewhere in the Complaint,

that the rights it relies upon are broader than just rights in the Trade Mark

Applications. In particular the Complaint makes clear that the "Complainant

has rights in the Hqhair brand".

7.19 It is now clear under the Policy that "common law rights" suffice

for the purposes of establishing the relevant trademark rights of the Complainant

pursuant to paragraph 4(a)(i) of the Policy. The Panel refers in this respect

to the decision in Louis de Bernieres v. Old Barn Studios Limited, WIPO

Case No. D2001-0122 and the decision of this Panel in Sibyl Avery Jackson

v. Jan Teluck, WIPO Case No. D2002-1180.

7.20 Has the Complainant in this case brought sufficient evidence before the

Panel to establish such rights as at the date of registration of the Domain

Name? The Complainant contends that:

(a) the Complainant’s business had been in existence since the 1960s and has

operated an HQ Hair Salon in London since 1991;

(b) it launched its Internet brand HQhair from the site "www.hqhair.com"

in February 1999, and that this site receives "several millions of

hits per month" (although exactly when the website started to achieve interest

of this magnitude is not made clear); and

(c) it has achieved widespread coverage for its HQhair brand and is regularly

featured in articles in both regional and national press.

7.21 None of these assertions are contested by the Respondent. So far as press

coverage is concerned, the Complainant has also submitted evidence in this respect

that includes 24 articles from national newspapers and magazines dated between

December 2001 and April 2002 (including The Daily Express, The Mirror, The Daily

Mail, Hello, Cosmopolitan Hair and Beauty, Company), all of which feature HQhair

or hqhair.com.

7.22 This evidence is sufficient in the Panel’s opinion to show that the Complainant

had sufficient goodwill in the HQhair brand at the time that the Domain Name

was registered on April 22, 2002, to satisfy the requirement of rights in a

trade mark under the Policy.

7.23 The Panel also finds that the Domain Name is either confusingly similar

or identical to the HQhair name. The existence of the ".com" suffix,

the existence of the hyphen between the letters hq and the word hair and the

use of lower case characters in the Domain Name do not in this case serve to

alter this finding.

7.24 Accordingly, the Panel concludes that the Complainant has proved the relevant

elements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

7.25 Under paragraph 4(a)(ii) of the Policy, the Complainant must show that

the Respondent has no rights or legitimate interests in the Domain Name.

7.26 The only direct reference to lack of legitimate interests in the Complaint

is as follows:

"The Respondent should be considered as having no legitimate interest

in respect of the Domain Name because it was registered after the Complainant’s

trade mark applications were published and the Complainant had established goodwill

in the HQhair name."

7.27 This is not good enough. Firstly, as has already been explained earlier

in this decision, the statement appears at least in respect of two of the trade

mark applications to be factually false. Secondly, and more importantly, it

is little more than an assertion of the existence of rights for the purpose

of paragraph 4(a)(i) of the Policy.

7.28 Nevertheless, this statement is then followed by a reference to the Nike,

Inc. v. Khoo Lye decision (NAF Case No. FA01110000100180) from which

it is apparent what really is the Complainant’s case on this issue. In the part

of the Nike decision that deals with the question of the lack of legitimate

rights and interests is to be found the following passage:

"Any use by Respondent of the <niketown.net> domain name, identical

to Complainant's famous mark, would be an opportunistic attempt to attract customers

via Complainant's famous mark. See Nike, Inc. v. B. B. de Boer, WIPO

Case No. D2000-1397 (December 21, 2000) (finding no rights or legitimate

interests where one "would be hard pressed to find a person who may show a right

or legitimate interest" in a domain name containing Complainant's distinct and

famous NIKE trademark)."

7.29 The Complainant has not asserted that "HQhair" is a famous mark,

but certainly does appear to be asserting that the Respondent knew of the brand

prior to registering the Domain Name and that this was an opportunistic attempt

to attract customers via the Complainant’s mark. For the reasons given later

on in the context of the question of bad faith, the Panel accepts that this

is correct. To deal with a domain name in this manner certainly does not provide

a respondent with legitimate rights and interests in that domain name. In the

absence of any admissible assertion of the Respondent that it had legitimate

rights or interests here for some other reason, the Panel holds that paragraph

4(a)(ii) of the Policy is made out by the Complainant.

C. Registered and Used in Bad Faith

7.30 Paragraph 4(a)(iii) of the Policy requires that the Domain Name was registered

by the Respondent, and has been used, in bad faith.

7.31 A non-exclusive list of circumstances constituting evidence of bad faith

for the purposes of paragraph 4(a)(iii) are set out in paragraph 4(b) of the

Policy. They are as follows:

"(i) circumstances indicating that you have registered or you have acquired

the Domain Name primarily for the purposes of selling, renting or otherwise

transferring the Domain Name registration to the Complainant who is the owner

of the trade mark or service mark or to a competitor of that Complainant, for

valuable consideration in excess of your documented out-of-pocket costs directly

to the Domain Name; or

(ii) you have registered the Domain Name in order to prevent the owner of the

trade mark 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 website 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 website or location

or of a product or service on your website or location."

7.32 Although the relevant paragraphs in the Policy are not referred to in

the Complaint, it is clear that the Complainant is alleging bad faith under

paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.

7.33 Turing first to paragraph 4(b)(iii), the Complainant contends that by

registering the Domain Name and by pointing customers to a website offering

similar services to the Complainant, the Respondent is disrupting the Complainant’s

business by creating a likelihood of confusion with the Complainant’s business.

The Panel accepts that this may be so. The Panel is also prepared to accept

given the fact that both parties sell hair products that the Respondent is a

competitor of the Complainant. However, the Panel has doubts that the Respondent

registered the Domain Name primarily for the purpose of disrupting the Complainant’s

business.

7.34 This leaves the allegation under paragraph 4(b)(iv) of the Policy. The

Complainant asserts that the Domain Name will mislead Internet users to believe

that the Respondent’s website is affiliated with the Complainant’s HQhair brand

and that "the Respondent has chosen the Domain Name to capture the Complainant’s

Internet audience". It is inherent in this assertion that the Complainant

is alleging that the Respondent had knowledge of the Complainant’s goodwill

in the HQhair name when registering the Domain Name.

7.35 Given that the parties are based in the same country and operate in the

same fields, the relatively unusual nature of the name in question and the degree

of publicity that the Complainant achieved prior to the registration of the

Domain Name, the Panel finds that the Complainant has put forward a prima facie

and credible case to the effect that this the Respondent did have this knowledge

and that this was indeed the Respondent’s intention. The Respondent has but

forward no admissible evidence to the contrary. In the circumstances, the Panel

finds that the circumstances set out in paragraph 4(b)(iv) of the Policy have

been shown by the Complainant.

7.36 In the circumstances, the Panel holds that the requirement of registration

and use of the Domain Name in bad faith set out in paragraph 4(a)(iii) of the

Policy is made out by the Complainant.

8. Decision

8.1 For all the foregoing reasons, the Panel finds that the Complainant has

sufficiently proved that:

(i) the Domain Name is confusingly similar to a trade mark in which the Complainant

has rights;

(ii) the Respondent does not have any rights to or legitimate interest in the

Domain Name; and

(iii) the Domain Name was registered and has been used in bad faith.

8.2 Therefore, in accordance with Paragraphs 4(i) of the Policy and 15 of the

Rules, the Panel orders that the Domain Name <hq-hair.com> be transferred

to the Complainant.

Matthew S. Harris

Sole Panelist

Dated: February 5th, 2004