UltaChat.com: Respondent doesn’t want the domain but still won UDRP!

The registrant of the domain UltaChat.com didn’t intend to renew it, after choosing a different brand for his upcoming business.

That’s what he claimed, anyway, in a UDRP filed by Ulta Salon, Cosmetics & Fragrance, Inc.

Not wanting the domain or indicating zero interest in defending it typically results in a loss for the Respondent but in this case the Forum (NAF) panelist did some creative thinking.

Respondent claims that he registered the disputed domain name along with other domain names as candidates for a product to be launched by his company, and that a different name ultimately was selected. The Panel considers that claim to be plausible, and although unsubstantiated it is at least consistent with the evidence before the Panel, including Respondent’s repeated offers to transfer the domain name to Complainant (to which Complainant does not appear to have responded). There is no indication that Respondent was seeking or expecting payment in exchange for transferring the domain name to Complainant, at least provided that resolution could be agreed upon prior to Respondent’s deadline to submit his Response in this proceeding.

The decision was made to deny transfer of the domain to the Complainant, who will now have to coordinate the next step with the Respondent.

The domain transfer was denied.

Ulta Salon, Cosmetics & Fragrance, Inc. v. Hussain Ali Mirza

Claim Number: FA2202001986334

PARTIES

Complainant is Ulta Salon, Cosmetics & Fragrance, Inc. (“Complainant”), represented by Caitlin R. Byczko of Barnes & Thornburg LLP, Illinois, USA. Respondent is Hussain Ali Mirza (“Respondent”), USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is , registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

David E. Sorkin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 28, 2022; the Forum received payment on February 28, 2022.

On March 1, 2022, GoDaddy.com, LLC confirmed by email to the Forum that the domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ultachat.com. Also on March 3, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 March 28, 2022.

On April 4, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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, the 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.

PRELIMINARY ISSUE: REDACTION OF RESPONDENT’S IDENTITY

Respondent has requested that his personal information, including name and contact information, be redacted from any public record on the grounds that his contact information includes a residential address, personal phone number, and personal email address; and that he made several attempts to resolve the matter by settlement but Complainant did not follow up prior to the filing deadline for the Response.

Paragraph 4(j) of the Policy authorizes the redaction of portions of a decision in exceptional cases. Redaction of a respondent’s name may be appropriate, for example, where the respondent is an innocent third party whose name was used fraudulently to register a domain name. See, e.g., Harry Winston, Inc. v. [Redacted] / Winsfon, FA 1781418 (Forum May 14, 2018); Randstad Holding N.V. v. [Redacted], FA 1407799 (Forum Oct. 25, 2011). Other circumstances may warrant redaction of a respondent’s identity. See, e.g., Securian Financial Group, Inc. v. [redacted], FA 1965252 (Forum Oct. 21, 2021) (redacting respondent’s name and other personal information on medical grounds where respondent consented to transfer of the domain name).

Under the circumstances presented in this case, the Panel considers it appropriate to include in this decision Respondent’s name and the fact that he is located in the United States.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the largest beauty retailer in the United States, operating 1,299 retail stores and also offering products online. Complainant sells products from a variety of beauty brands, including its own private label. Complainant has used ULTA and related marks in connection with goods and services since at least as early as 1990. Complainant owns numerous United States trademark registrations, including registrations for ULTA in standard character form, along with registrations in other jurisdictions worldwide, and also asserts common law rights in the ULTA mark arising from extensive use and promotion. Complainant states that there is no other entity in the health and beauty industry apart from Complainant that is known as Ulta.

Respondent registered the disputed domain name via a privacy registration service in September 2021. The domain name resolves to a landing page stating that the domain name “is parked free, courtesy of GoDaddy.com.” The page contains links to third-party websites in various categories, including “Beauty Hair Salon,” “Grocery Shopping,” “Beauty Salons,” and “Ulta Hair Salon,” at least some of which direct users to direct competitors of Complainant. Complainant states that Respondent is not commonly known by the disputed domain name, is not affiliated with Complainant, and is not licensed or otherwise authorized to use Complainant’s mark.

Complainant contends on the above grounds that the disputed domain name is confusingly similar to its ULTA mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent states that he selected the disputed domain name as a possible domain for a “chat solution” unrelated to Complainant’s business, noting that his company has clients predominantly in the automotive space. He states that “ulta” translates to “upside down” in Hindi and is suggestive of various attributes of the product. He states further that he also registered other domain names as potential candidates for the product; that a different name was ultimately selected; and that he therefore does not intend to renew the registration of the disputed domain name prior to its expiration later this year. (The Response does not identify Respondent’s company nor any of the other domain names that he claims to have registered, and is not accompanied by evidence to corroborate Respondent’s statements.)

Respondent states that he has offered to transfer the domain name to Complainant but Complainant has not responded to that offer. In an email dated March 3, 2022, sent to the Forum and to Complainant’s counsel, Respondent stated “If Ulta Beauty wants the domain name they can have it.” In subsequent messages, Respondent stated that he had no interest in retaining the domain name; that he had not received a response from Complainant to his offer to transfer the domain name; and that he wished to resolve the matter before the final response deadline so that he would not need to file a formal response.

FINDINGS

The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights, and that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

The Panel further finds that Complainant has not proved that the disputed domain name was registered and is being used in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted 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

The disputed domain name incorporates Complainant’s registered ULTA trademark, adding the generic term “chat” and the “.com” top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant’s mark. See, e.g., Ulta Salon, Cosmetics & Fragrance, Inc. v. Total gaming solution B. V., FA 1964015 (Forum Oct. 22, 2021) (finding confusingly similar to ULTA); Hyperconnect, Inc. & Ahn Sang Il v. Çağlar Şahingöz, D2021-1840 (WIPO Sept. 2, 2021) (finding confusingly similar to AZAR). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.

Rights or Legitimate Interests

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).

The disputed domain name incorporates Complainant’s registered mark without authorization. Respondent is not making any active use of the domain name and has indicated that he does not intend to use it in the future.

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

Registration and Use in Bad Faith

Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name.” Under paragraph 4(b)(ii), bad faith may be shown by evidence that the domain name was registered “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct.” Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site 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 [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”

The circumstances set forth in paragraph 4(b) are not exhaustive; the totality of the circumstances must be considered in the assessment of bad faith. Factors relevant to whether an inference of bad faith is appropriate in cases involving “passive holding” or non-use of a domain name include:

(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 3.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; Toronto-Dominion Bank v. Mike Pierre, FA 1874597 (Forum Jan. 13, 2020) (quoting WIPO Overview § 3.3).

In addition, while the use of a privacy registration service is not in itself determinative evidence of bad faith, it is an appropriate factor to be taken in consideration of the issue. See, e.g., Beauty Holding, LLC v. Benjamin Wilde, FA 1925183 (Forum Jan. 18, 2021). But there are also reasons why a domain name might be registered in the name of a privacy registration service that are not indicative of bad faith. For example, one who is registering domain names as candidates for a future business venture might want to prevent competitors from learning of the venture; an individual might wish to prevent dissemination of personal contact information; and some domain name registrars apparently use privacy registration services to mask registration data for purposes of GDPR compliance. Some of all of those circumstances appearing to be present here, the Panel does not consider the fact that the disputed domain name was registered in the name of a privacy registration service to be probative as to Respondent’s bad faith.

The disputed domain name is being used to display a registrar-generated parking page that includes links to competitors of Complainant. Although a default page generated and maintained by a registrar and containing advertisements or pay-per-click links can support an inference of bad faith, the Panel is reluctant to place substantial weight on that circumstance in this case, particularly in light of Respondent’s plausible explanation of the purpose for which the domain name was registered. Cf. YETI Coolers, LLC v. Joe Berry, FA 1679058 (Forum July 21, 2016) (finding bad faith where domain name combining complainant’s mark and a generic term for its products was registered via privacy registration service and resolved to registrar-generated link page, and respondent failed to come forward with any explanation).

Respondent claims that he registered the disputed domain name along with other domain names as candidates for a product to be launched by his company, and that a different name ultimately was selected. The Panel considers that claim to be plausible, and although unsubstantiated it is at least consistent with the evidence before the Panel, including Respondent’s repeated offers to transfer the domain name to Complainant (to which Complainant does not appear to have responded). There is no indication that Respondent was seeking or expecting payment in exchange for transferring the domain name to Complainant, at least provided that resolution could be agreed upon prior to Respondent’s deadline to submit his Response in this proceeding.

The Panel finds that Complainant has not proved that the disputed domain name was registered and is being used in bad faith.

DECISION

Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.

David E. Sorkin, Panelist

Dated: April 4, 2022

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