Alleghany Pharmacal Corporation v. Hair for Life

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Alleghany Pharmacal Corporation v. Hair for Life

Case No. D2003-1045

1. The Parties

The Complainant is Alleghany Pharmacal Corporation, of Great Neck, New York, United States of America, represented by Trademark & Patent Counselors of America, PC, United States of America.

The Respondent is Hair for Life, of Woodbridge, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <hairoff.com> is registered with Network Solutions, LLC. (hereinafter "Registrar" or "NSI").

3. Procedural History

The Complaint was filed electronically with the WIPO Arbitration and Mediation Center (the "Center") on December 30, 2003, and in hard copy on January 15, 2004. On January 6, 2004, the Center transmitted by email to NSI a request for registrar verification in connection with the domain name at issue. On January 8, 2004, NSI 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. 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").

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 January 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2004. On January 20, 2004, Respondent sent an email to the Center that essentially denied the allegations of the Complaint. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on February 12, 2004.

The Center appointed M. Scott Donahey as the Sole Panelist in this matter on February 23, 2004. 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.

On February 13, 2004, the Center received a late Response from the Respondent. The Response was apparently prepared and signed by the principal of Respondent without legal assistance and was dated February 4, 2004. The Response was submitted only in hard copy and despite a request from the Center for an electronic copy, no electronic copy was ever forwarded.

On February 20, 2004, Complainant objected to receipt and consideration of the Response on the grounds that 1) the Response was untimely and 2) no electronic copy had been received. The Center forwarded the Response to the Panel, so that the Panel might determine whether it would accept and consider the Response.

The Panel has the discretion to "determine the admissibility, relevance, materiality and weight of the evidence," Rule 10(d). The Panel is mandated to see "that each Party is given a fair opportunity to present its case," Rule 10(b). Bearing these precepts in mind, and considering the facts that the Response was filed by an individual who apparently has no legal training and that the Response was filed only five days after the due date, the Panel has determined that it will accept and consider the Response.

4. Factual Background

Complainant registered its trademark HAIR OFF with the United States Patent and Trademark Office in connection with cold wax on paper strip depilatory, warm wax depilatory, cream depilatory, and cream hair bleach. Registration issued on October 25, 1988, showing a first use in commerce in November 1978. Complaint, Annex D. As the mark describes the attributes of the products with which it is associated, it is inherently a weak mark.

Complainant or its licensee has spent $3,000,000 in the prior eight years in advertising, although it is not apparent that this amount was spent exclusively on the advertising of products associated with the HAIR OFF mark, since the distributor represents a number of other products. Response, Annex D. Sales of "Hair Off" products have averaged $3.6 million over the last eight years.

Complainant’s licensee, CCA Industries, Inc., is headquartered in East Rutherford, New Jersey, United States of America.

Respondent is located in Woodbridge, New Jersey, United States of America.

and is affiliated with Perma Tech Hair Removal Institute in Woodbridge, New Jersey, United States of America. As the name suggests, Perma Tech is involved in permanent hair removal. Complaint, Annex F. The two principals of respondent provide hair removal services. Respondent does not sell any hair removal products.

Respondent registered the domain name at issue on March 24, 1999. Complaint, Annex B. Respondent has not used the domain name at issue to resolve to a website.

Complainant attached a print out of a page from a website critical of Respondent’s principals and their practice of hair removal. Complaint, Annex I. The Panel regards the statements in this annex to be rank hearsay, and the Panel will not consider Annex I for any purpose.

Respondent claims that it was unaware of Complainant, its licensee, or the "Hair Off" product line until Respondent was contacted by a representative of Complainant’s licensee. This initial contact was apparently by telephone and occurred in mid-2003.

Respondent states that it intends to use the domain name at issue to resolve to the Perma Tech website.

On June 23, 2003, Complainant’s counsel sent Respondent a cease and desist letter on June 23, 2003. Response, Annex C. Respondent sent Complainant a letter dated July 1, 2003, in which Respondent denied any bad faith and refused to transfer the domain name at issue. Response, Annex C.

5. Parties’ Contentions

A. Complainant

Complaint contends that the domain name at issue is identical or confusingly similar to its registered trademark, HAIR OFF, that Respondent has no rights or legitimate interest in the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

B. Respondent

Respondent contends that the domain name at issue is merely a descriptive term, that Respondent has rights and interests in the use of the domain name since it is related to the profession of the principals of Respondent, that Respondent intends to use the domain name at issue to resolve to a professional website featuring hair removal, and that Respondent was unaware of Complainant at the time it registered the domain name at issue.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

The Panel finds that the domain name at issue, <hairoff.com>, is identical

to a trademark in which the Complainant has rights, namely HAIR OFF. Busy

Body, Inc. v. Fitness Outlet Inc., WIPO

Case No. D2000-0127 (holding that the elimination of space, given constraints

of domain name system, has no legal significance).

B. Rights or Legitimate Interests

Mere registration of a domain name without use does not confer rights or legitimate

interests in respect of the domain name. Educational Testing Service v. TOEFL,

WIPO Case No. D2000-0044. Respondent’s

intent to use the domain name in issue in conjunction with the profession of

its principals. Respondent has failed to produce sufficient evidence of demonstrable

preparations to use the domain name in connection with a bona fide offering

of services. SADD, Inc. v. Steven Weber, et al., WIPO

Case No. D2000-0170. Moreover, Respondent’s intended use of the domain name,

to resolve to a website at which services directly competitive to the use of

Complainant’s products would be offered for commercial gain would constitute

registration and use in bad faith. Policy, ¶ 4(b)(iv).

C. Registered and Used in Bad Faith

Respondent has made no use of the domain name at issue. While this conduct

does not fit squarely within any of the examples set forth in Paragraph 4(b)

of the Policy, those examples are not intended to be exclusive. It has long

been established that in given factual situations, non-use and inaction can

constitute bad faith registration and use. One of the earliest Panel decisions,

Telstra Corporation Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003, established that "the concept of a domain name

‘being used in bad faith’ is not limited to positive action; inaction is within

the concept. That is to say, it is possible, in certain circumstances, for inactivity

by the Respondent to amount to the domain name being used in bad faith."

Telstra, paragraph 7.9. Perhaps the most cited of all UDRP decisions

to be handed down to date, the Telstra decision and its rationale have

been followed by numerous subsequent panel decisions. By now the rule is well

established that in performing the Telstra analysis a Panel must "give

close attention to all the circumstances of the Respondent’s behaviour."

[SIC]. Id., Paragraph 7.11. It is important to note that the focus

is to be placed on the Respondent’s behavior, rather than on his words.

In the present case, Respondent resides in the same state as that of Complainant’s

licensee and is engaged in the same business as that to which Complainant’s

products are directed, namely hair removal. Respondent’s principal has admittedly

been involved in the hair removal profession for thirty-seven years. Complainant’s

product has been on the market for twenty-five years. It is difficult to believe

that Respondent was unaware of Complaint’s products. Moreover, under United

States law, Respondent was on constructive notice of the existence of Complainant’s

trademark registration. Cellular One Group v. Paul Brien, WIPO

Case No. D2000-0028. Respondent’s stated intent was to use the domain name

at issue to resolve to a website on which services directly competitive to the

purpose of Complainant’s products. Finally, in the almost five years since the

domain name was registered, Respondent has failed to make any use of it.

Given the above facts and circumstances, the Panel finds that Respondent has registered and is using the domain name at issue in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <hairoff.com>, be transferred to the Complainant.

M. Scott Donahey

Sole Panelist

Dated: February 26, 2004