Premier Nail International filed a UDRP against the domain PremierNailSupply.com, arguing the domain copied its common-law mark PREMIER NAIL SOURCE and confused customers. The panel accepted standing: “premier nail” is recognizable and the “supply” tail doesn’t avoid similarity.
On rights/legitimate interests, the panel saw a real California business operating as Premier Nail Supply with licenses, invoices and site evidence.
As PREMIER / NAIL / SUPPLY are descriptive terms used widely in the industry, and because the Complainant had no registration and offered thin proof of market penetration, the panel wasn’t persuaded that Respondent’s use was illegitimate or targeted; alleged actual confusion wasn’t substantiated.
Final decision: Deny the transfer of the domain PremierNailSupply.com to the Complainant, while also denying the Respondent’s request for a finding of Reverse Domain Name Hijacking.
Copyright © 2025 DomainGang.com · All Rights Reserved.Premier Nail International, Inc. d/b/a Premier Nail Source v. Jenny Vongsa / Premier Nail Supply
Claim Number: FA2508002171263
PARTIES
Complainant is Premier Nail International, Inc. d/b/a Premier Nail Source (“Complainant”), represented by Joseph J. Weissman of JOHNSON, POPE, BOKOR, RUPPEL & BURNS, LLP, Florida, USA. Respondent is Jenny Vongsa / Premier Nail Supply (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is premiernailsupply.com, registered with Tucows Domains 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.
Georges Nahitchevansky as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on August 13, 2025; Forum received payment on August 13, 2025.
On August 13, 2025, Tucows Domains Inc. confirmed by e-mail to Forum that the premiernailsupply.com domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 August 14, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 2025 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@premiernailsupply.com. Also on August 14, 2025, 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.
A timely Response was received and determined to be complete on September 3, 2025.
On September 4, 2025, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Georges Nahitchevansky as Panelist.
On September 10, 2025, Complainant submitted an unsolicited Additional Submission in partial reply to Respondent’s response.
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, a Florida corporation, states that it is a seller of manicure and pedicure tools, implements and related products in the United States and has done so since 2000 under the common law name and mark PREMIER NAIL SOURCE.
Complainant maintains that it has strong rights in the PREMIER NAIL SOURCE on account of its past and current activities. Complainant maintains that it originally offered its products through nationwide marketing in magazines and telephone sales and that since June 2002 it has offered products nationwide through its website at www.premiernailsource. Complainant also maintains that it has a long history of promoting the PREMIER NAIL SOURCE mark nationwide and had spent in excess of USD $1million prior to when Respondent started using the disputed domain name. Lastly, Complainant asserts that it is amongst the leading suppliers of many leading nail brand products in North America.
Complainant contends that Respondent registered the disputed domain name no earlier than May 28, 2020, but did not commence use of the disputed domain name until December 2021. Complainant also notes that Respondent may have opened a brick and mortar store in California using the Premier Nail Supply name at that time.
Complainant argues that Respondent is utilizing the disputed domain name to “compete directly with Complainant for online sales of manicure and pedicure tools, implements and related products.” Complainant further argues that Respondent emphasizes the word “Premier” at the top of each page of its website. Finally, Complainant states that it only became aware of Respondent’s use of the disputed domain name when Complainant began receiving complaints from “confused customers who purchased from Respondent’s PREMIERNAILSUPPLY.COM domain believing that they were purchasing from Complainant.”
Complainant argues that the disputed domain name is confusingly similar to Complainant’s PREMIER NAIL SOURCE mark, which Complainant contends “had become associated with Complainant in the minds of the relevant public, thus creating protectable secondary meaning in Complainant’s PREMIER NAIL SOURCE mark nationwide, including California.” Complainant asserts that the disputed domain name fully includes the dominant term “Premier” and the word “nail,” but merely replaces the descriptive terms “source” with the synonym “supply.”
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not licensed by Complainant and because the disputed domain name is a confusingly similar copy of PREMIER NAIL SOURCE. Complainant further contends that Respondent cannot own any intellectual property rights or have a legitimate interest in PREMIER NAIL SUPPLY given that Complainant already had established prior rights in PREMIER NAIL SOURCE when Respondent registered the disputed domain name and given that Respondent is using a confusingly similar name and mark to directly compete with Complainant – a name that has caused actual confusion.
Lastly, Complainant asserts that Respondent has registered and used the disputed domain name in bad faith as Respondent registered the disputed domain name well after Complainant had adopted the PREMIER NAIL SOURCE name and mark and had become an industry leader in selling manicure and pedicure tools and related products. Complainant argues that Respondent was likely aware of Complainant when it registered the dispute domain name as a simple United States trademark search would have put Respondent on notice of Complainant’s rights. Lastly, Complainant maintains that Respondent registered and has used the disputed domain name in bad faith to confuse consumers into visiting Respondent’s website selling similar goods.
B. Respondent
Respondent rejects Complainant’s contentions.
Respondent argues that the disputed domain name consists of the descriptive terms “premier,” “nail,” and “supply” and will be understood by consumers as descriptive of a nail product supplier, not as Complainant’s business. Respondent also argues that the disputed domain name differs significantly in wording and commercial impression from “Premier Nail Source” since the word “supply” indicates “a retail/wholesale descriptive purpose, not a source identity.”
Respondent maintains it operates a genuine business selling nail products and has provided copies of a business license, a limited liability company registration, invoices and website screenshots from Respondent’s website. Respondent also maintains that the trade name Premier Nail Supply has been used in commerce and that Respondent is recognized by that business name
Respondent asserts that there has been no bad faith registration or use of the disputed domain name as Respondent (i) never attempted to sell such to Complainant, (ii) only registered the disputed domain name and not multiple domain names, (iii) independently runs a nail supply business and there was never any intent to disrupt Complainant’s business, and (iv) used the descriptive domain transparently for a legitimate business.
Lastly, Respondent makes a request for reverse domain name hijacking on the basis that “Complainant is attempting to misuse the UDRP to obtain a descriptive domain to which it has no exclusive rights.”
C. Additional Submissions
On September 10, 2025, Complainant filed an unsolicited Additional Submission.
Neither the Policy nor the Rules provide a party with an automatic right to submit additional arguments or evidence. Under paragraph 10 of the Rules, panels enjoy broad powers for conducting administrative proceedings, provided that the parties are treated fairly and the proceedings are conducted expeditiously. Within this framework, a panel can determine within its sole discretion whether to admit or reject supplemental submissions, and, under paragraph 12 of the Rules, to request further statements or documents from either party. In exercising this discretion, many panels have made clear that additional evidence or submissions should only be admitted in exceptional circumstances, such as, by way of example, where new pertinent facts arise after the submission of the complaint or where a party could not have reasonably known of the existence, relevance or veracity of further material when it made its primary submission. See, e.g., Office Club, Ltd. v. John Adem, WIPO Case No. D2000-1480; Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; Cerulean Studios, LLC v. Hexuan Cai, WIPO Case No. D2013-0902. The Panel agrees with this position and adds that further material should only be admitted to the extent necessary in a proceeding and when such is essential in reaching a fair decision on the facts of the matter.
In the instant case, and after reviewing the Complaint and Respondent’s response, the Panel question whether there are exceptional circumstances in this matter that warrant the acceptance of this supplemental filing to address Respondent’s contentions regarding the descriptiveness of the terms “premier,” “nail,” and “supply.” Such arguments by Respondent could easily have been anticipated given that Complainant argued that “Premier” in its name functions as a trademark. Nevertheless, and in the interest in of reaching a fair decision, the Panel is willing to accept Complainant’s Additional Submission.
In that submission, Complainant argues that even if PREMIER NAIL SOURCE is considered descriptive as a whole the mark is still protectable upon proof of secondary meaning, ample proof of which Complainant claims it has provided. Complainant also notes that the United States Patent and Trademark Office has permitted registration of a number of marks that include the word “Premier” followed by descriptive / generic terms with or without a showing of acquired distinctiveness.
FINDINGS
Complainant holds some trademark rights for the PREMIER NAIL SOURCE mark. The disputed domain name is confusingly similar to Complainant’s PREMIER NAIL SOURCE mark. However, Complainant has not established that Respondent lacks rights or legitimate interests in the disputed domain name.
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.
Identical and/or Confusingly Similar
In this matter, Complainant claims common law rights in the PREMIER NAIL SOURCE name and mark. In support of that claim, Complainant has provided examples of its use of its claimed name and mark going back to the early 2000s. These include, inter alia, some early examples of advertising of Complainant’s services under PREMIER NAIL SOURCE on a website called NailMag.com, screen shots from Complainant’s website at premiernailsource.com and a declaration from its principal detailing Complainant’s activities using the name and mark PREMIER NAIL SOURCE. In total, the Panel believes that Complainant has made an evidentiary showing sufficient to establish that over the course of almost twenty five years Complainant has used PREMIER NAIL SOURCE as a trademark (and source identifier) for its services as a supplier of manicure and pedicure tools and related products. What the extent of those rights might be is discussed in more detail below in the discussion of the second element. But for purposes of the first element, the Panel accepts that Complainant has trademark rights in the PREMIER NAIL SOURCE mark.
Given that the first element is essentially a standing requirement, the fact that the dominant portion of Complainant’s claimed mark, namely, “PREMIER NAIL” is fully incorporated and clearly recognizable at the head of the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark for purposes of Paragraph 4(a)(i) of the Policy. The addition of the word “supply” at the tail of the disputed domain name does not detract from that finding.
Rights or Legitimate Interests
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Paragraph 4(a)(ii) of the Policy, and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
In this case, Complainant does not have a trademark registration or application for its claimed PREMIER NAIL SOURCE name and mark. Rather, Complainant contends that it holds broad nationwide common law rights in PREMIER NAIL SOURCE such that Respondent’s adoption and use of “Premier Nail Supply” cannot be legitimate — and essentially is an effort by Respondent to ride on Complainant’s coattails for a competing nail and manicure tools and related products business.
While the Panel is of the opinion that Complainant has some trademark rights in PREMIER NAIL SOURCE, there are questions regarding the scope and strength of those rights. As Complainant does not hold a trademark registration for the PREMIER NAIL SOURCE, for Complainant to claim broad nationwide rights in the United States it must establish that its use has resulted in market penetration in the geographic areas it is claiming and when such rights arose. Put another way while a trademark registration in the United States creates a presumption of national rights, in the absence of a registration a party claiming common law rights must establish its activities in the geographic areas it claims or a national reputation such that the relevant consumers would associate the mark in question with a source (even if unknown).
Here, Complainant claims that is has done business in California, where Respondent is located, under the PREMIER NAIL SOURCE mark and thus has rights in its common law mark in California. Complainant also claims that through advertising of its mark and as a leading seller of several nail and product brands it has acquired a national reputation in PREMIER NAIL SOURCE that would likewise cover California.
Determining whether Complainant, who is based in Florida, has established rights in California or a national reputation by the time Respondent started using the name “Premier Nail Supply” is, to be sure, an evidentiary intensive inquiry. In the instant case, Complainant has provided no evidence of any of its sales or activities, per se, in California. Complainant has provided some limited early advertising on an online website publications it claims without evidence was a leading online publication at the time the ads appeared. Moreover, the fact that Complainant has a website offering its products to consumers generally does not in and of itself establish that Complainant was selling products in California in a systematic way such that it had attained market penetration in California, was known to relevant consumers in California, or had a national reputation. In all, the Panel questions, based on the limited evidence provided, the extent of Complainant’s common law rights at the time Respondent acquired and started using the disputed domain name for a competing nail and manicure supply business in California. Without such evidence, Respondent’s actions are not per se illegitimate if, for example, Complainant’s actual geographic scope of business was primarily focused on Florida, the Southeast of the United States or the East coast.
But even assuming that Complainant holds such nationwide rights, a basic issue Complainant faces is the strength and uniqueness of its PREMIER NAIL SOURCE mark. Respondent argues that the terms “premier, “nail” and “supply” (and presumably “source”) are descriptive terms that basically will be understood by consumers as describing a business that provides nail supplies. Complainant, on the other hand, argues that while the terms “nail” and “source” (and presumably “supply”) are descriptive terms, it has rights in PREMIER in connection with its services. Complainant has provided a Google search for “Premier Nail Supply” that includes references to Complainant. The Panel ran the same search and found references to both Respondent and Complainant along with other uses of “premier” or “premiere” by third parties, such as “Premiere Beauty Supplies.” Moreover, a search for “premier nail” alone brought up a plethora of “premier nail” uses, both as a name or descriptively, such as “Premier Nail Bar,” “Premier Nail Spa,” “Premier Nails & Spa,” “Premier Nail Brand,” “Premier Nail Shop,” and many others.
Given these many third party “premier” uses in connection with nail and beauty related products and services it is hard for the Panel to assess, whether, here, Complainant has sufficiently strong common law rights in “premier” such that Respondent’s separate use of “premier” with descriptive terms in California is illegitimate and meant to take advantage of Complainant’s rights.
Notably, Respondent has provided proof of having operated a real business for several years using the name “Premier Nail Supply” and to be known by some consumers by the name “Premier Nail Supply.” While Complainant contends that Respondent has targeted Complainant and its mark, Complainant has provided no direct evidence showing that Respondent was actually aware of Complainant or at any time tried to promote itself as or connected to Complainant. And while Complainant claims that there has been actual consumer confusion and that Respondent has thus sought to confuse consumers, none of these alleged instances of confusion were provided. Additionally, no actual physical evidence was submitted by Complainant establishing that Respondent was trying to pass itself off as Complainant or actively misleading consumers into believing Respondent was connected to Complainant (apart from a statement by Complainant’s principal to that effect).
To the Panel, this matter is less about cybersquatting than a trademark dispute between two potential rival companies. Complainant’s Complaint reads like a trademark infringement claim. And while the Panel is mindful that there are questions regarding the extent of Complainant’s rights, there are likewise questions regarding Respondent’s adoption and use of “Premier Nail Supply” for a competing business. Consequently, if Complainant believes Respondent is infringing its rights, then such a claim should be brought in another forum where there can be discovery on the extent of Complainant’s and Respondent’s claimed rights and actions, cross-examination of witnesses and an full assessment of the merits of the matter. But based on the record before the Panel, Complainant has not established that Respondent lacks a legitimate interest or is not making a bona fide use of the disputed domain name to legitimately offer goods and services. As such, Complainant’s Complaint fails on the second element.
Registration and Use in Bad Faith
In the light of the Panel’s finding as to the second element, the Panel does not need to address the third element of registration and use in bad faith in respect of the disputed domain name.
REVERSE DOMAIN NAME HIJACKING
Paragraph 15(e) of the Rules provides that, if after considering the submissions, the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The mere lack of success of the complaint is not, on its own, sufficient to constitute reverse domain name hijacking. WIPO Overview 3.0, section 4.16.
Here, Complainant owns some common law trademark rights in PREMIER NAIL SOURCE that predate Respondent’s registration of the disputed domain name in May 2020. As there are clear commonalities between PREMIER NAIL SOURCE and PREMIER NAIL SUPPLY, which are both used for what appears to be similar businesses, it was not unreasonable for Complainant to initiate a proceeding that concerned a disputed domain name that on its face could be seen as based on PREMIER NAIL SOURCE. The mere fact that Panel as noted above has found that this matter is more of a trademark dispute than a cybersquatting claim does not render Complainant’s actions to have been undertaken in bad faith. Accordingly, the request for a finding of reverse domain name hijacking is denied
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the premiernailsupply.com domain name REMAIN WITH Respondent.
Georges Nahitchevansky, Panelist
Dated: September 15, 2025
