Ulta Beauty, Inc. is a popular company in the US selling beauty products since 2001. The company registered the mark ULTA with the USPTO in 2001.
The domain name ULTA.net was registered in 2002 and it’s a pronounceable LLLL .net domain, as far as domain investing is concerned. The ensuing UDRP decided on the fate of the domain, after 23 years in registration.
The panelist confirmed that the Complainant’s mark is valid and predates the domain’s registration. The domain name was used to deliver PPC ads, which is a valid use by default; however, the ads displayed involved beauty products related to the Complainant’s own product line.
It was a quick decision for the sole panelist at the Forum:
“The Domain Name is being used for commercial pay-per-click links which feature the Complainant’s ULTA mark in their headers. Use of a domain name containing a mark with a reputation for pay-per-click links indicates bad faith being disruptive of the Complainant’s business and diverting customers for commercial gain and can also indicate actual knowledge of the Complainant and its business. Accordingly, the Panel holds, in addition, that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the web site or products or services offered on it likely to disrupt the business of the Complainant.”
Final decision: Grant the transfer of the domain ULTA.net to the Complainant. Other ULTA TLDs should take notice.
Copyright © 2025 DomainGang.com · All Rights Reserved.Ulta Beauty, Inc. v. Data Protected Data Protected
Claim Number: FA2412002131033
PARTIES
Complainant is Ulta Beauty, Inc. (“Complainant”), represented by Melissa A. Vallone of Barnes & Thornburg LLP, Illinois, USA. Respondent is Data Protected Data Protected (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is ulta.net (‘the Domain Name’), 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.
Dawn Osborne as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on December 23, 2024; Forum received payment on December 23, 2024.
On December 24, 2024, Tucows Domains Inc. confirmed by e-mail to Forum that the ulta.net 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 December 26, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 15, 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@ulta.net. Also on December 26, 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 January 16, 2025 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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
The Complainant or one of its group is the owner of the mark ULTA registered, inter alia, in the USA for retail services relating to beauty products since 2001.
The Domain Name registered in 2002 is not distinguished from the Complainant’s mark by the addition of the gTLD .net.
The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.
The Domain Name is being used for pay-per-click links which include the Complainant’s mark ULTA in their header, but which lead to third party competing businesses which is not a bona fide offering of goods or services or a legitimate non commercial fair use. It is registration and use in bad faith for the purposes of confusing customers for commercial gain and disrupting the Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
The Complainant or one of its group is the owner of the mark ULTA registered, inter alia, in the USA for retail services relating to beauty products since 2001.
The Domain Name registered in 2002 is being used for pay-per-click links which include the Complainant’s mark ULTA, but which lead to third party competing businesses.
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 Domain Name consists of the Complainant’s mark ULTA (registered, inter alia in the USA for retail services relating to beauty products since 2001) and the gTLD .net.
The gTLD .net does not serve to distinguish the Domain Name from the Complainant’s mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant’s red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is identical for the purposes of the Policy to a mark in which the Complainant has rights.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use of the Domain Name is commercial and so is not legitimate non commercial fair use.
The Domain Name is being used for competing pay-per-click links which include the Complainant’s mark in their header. Use for commercial competing pay-per-click links does not constitute a bona fide offering of goods or services or a legitimate non commercial or fair use. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (“Respondent’s use of .. domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Domain Name is being used for commercial pay-per-click links which feature the Complainant’s ULTA mark in their headers. Use of a domain name containing a mark with a reputation for pay-per-click links indicates bad faith being disruptive of the Complainant’s business and diverting customers for commercial gain and can also indicate actual knowledge of the Complainant and its business. Accordingly, the Panel holds, in addition, that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the web site or products or services offered on it likely to disrupt the business of the Complainant. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA 1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the geddiploma.org domain name pursuant to Policy 4(b)(iii)”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA 1615034 (Forum June 4, 2015) (holding that the respondent’s use of the capitaloneonebank.com domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy 4(b)(iv)). See also University of Rochester v. Park HyungJin, FA 1587458 (Forum Dec. 9, 2014) (where the Panel inferred Respondent’s actual knowledge based on Respondent’s use of the domain name to promote links related to the same field as where Complainant’s mark is used).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
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 ulta.net domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: January 16, 2025