The Respondent of the UDRP involving the domain name UltaCompany.com did not file a formal response.
Ulta Beauty, Inc. is the largest beauty retailer in the United States and the premier beauty destination for cosmetics, fragrance, skin, hair care products and salon services. The ULTA mark is thus famous and the Forum panelist ordered the domain to be transferred to the Complainant.
The Respondent’s reaction can be summarized in the cheeky response via the domain’s new landing page:
ULTACOMPANY.COM
Well done on winning the arbitration decision
Do contact me via namecheap if you would like to purchase this domain instead of grabbing it for free. It will be a tax right off…
I will include the other 100+ related domains in the sale as a mark of good faith if you decide to act accordingly
DECISION
Ulta Beauty, Inc. v. Joe Lucas
Claim Number: FA2401002080900
PARTIES
Complainant is Ulta Beauty, Inc. (“Complainant”), represented by Melissa A. Vallone of Barnes & Thornburg LLP, Illinois, USA. Respondent is Joe Lucas (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is ultacompany.com, registered with NameCheap, Inc.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on January 25, 2024; Forum received payment on January 25, 2024.
On January 26, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the ultacompany.com domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 29, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ultacompany.com. Also on January 29, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On February 21, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant states that, since opening its first store more than 30 years ago, it has become the largest beauty retailer in the United States and the premier beauty destination for cosmetics, fragrance, skin, hair care products and salon services. Since at least as early as 1990, Complainant has been continuously and extensively engaged in the business of marketing and its goods and services under the ULTA mark. Through its online and brick-and-mortar stores, Complainant offers more than 25,000 products from over 500 well-established and emerging beauty brands across all categories and price points, including Complainant’s own private label. As of October 28, 2023, Complainant operates 1,374 retail stores across 50 states and the District of Columbia and also distributes its products through its website https://www.ulta.com. Complainant asserts rights in the ULTA mark through its registration in the United States in 2001. The mark is registered elsewhere around the world.
Complainant alleges that the disputed domain name is confusingly similar to its ULTA mark, because it incorporates the mark in its entirety and merely adds the generic/descriptive term “company” along with the generic top-level domain (gTLD) “.com.”
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name as Complainant has not authorized Respondent to use its mark and Respondent is not commonly known by the disputed domain name. Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, the resolving website offers for sale products that compete with those of Complainant.
Further, says Complainant, Respondent registered and is using the disputed domain name in bad faith. Respondent attempts to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant by using the ULTA mark to promote products that directly compete with those of Complainant. Respondent had knowledge of Complainant’s rights in the ULTA mark. Respondent offers the disputed domain name for sale. Although there is no evidence of phishing or scamming, it is possible that Respondent could use emails associated with the disputed domain name to pass itself off as Complainant or otherwise confuse Complainant’s customers with fraudulent emails.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has registered trademarks for the mark ULTA and uses it to market beauty products. The mark was registered in 2001.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name was registered in 2023.
The resolving website offers products that compete with those of Complainant.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
The disputed domain name incorporates Complainant’s ULTA mark in its entirety, merely adding the generic/descriptive term “company” and the gTLD “.com.” Use of a disputed domain name that includes a mark in its entirety and adds a generic term and gTLD does not distinguish the domain name form the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the WHOIS information for the disputed domain name lists the registrant as “Joe Lucas”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to offer competing goods. Use of a disputed domain name to offer competing services is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent does not use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Registration and Use in Bad Faith
Complainant provides evidence showing that Respondent offers to sell the disputed domain name, but does not offer any evidence regarding the price of such offers. Thus the Panel finds that Complainant has failed to satisfy its burden of proving that Respondent offers to sell the disputed domain name for a price in excess of out-of-pocket costs, and it will not further discuss this allegation.
Complainant alleges that the disputed domain name could be used in furtherance of email phishing, but admits that it has no evidence of such use. Thus the Panel finds that Complainant has failed to satisfy its burden of proving this allegation, and it will not further discuss it.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website offers products that compete with those of Complainant. Past panels have found bad faith pursuant to Policy ¶ 4(b)(iii) where a respondent appropriates a complainant’s mark to divert the complainant’s customers to the respondent’s competing business. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that the respondent registered and used the classicmetalroofing.com domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Thus the Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the ultacompany.com domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: February 21, 2024
