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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Alberto-Culver Company v. Louise Tyseng

Case No. D2006-0842

 

1. The Parties

The Complainant is Alberto-Culver Company of Melrose Park, Illinois, United States of America, represented by Roberts, Mlotkowski & Hobbes, P.C., United States of America.

The Respondent is Louise Tyseng of Enskededalen, Sweden.

 

2. The Domain Name and Registrar

The Disputed Domain Name <the-nexxus.com> is registered with eNom, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2006. On July 3, 2006, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On July 4, 2006, eNom, Inc. 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 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 July 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2006. On July 13, 2006, the Respondent submitted an email concerning the use and registration of the disputed domain name. The Center replied to the Respondent by email stating that the Respondent had an opportunity to file a formal response pursuant to paragraph 5 of the Rules. Absent the receipt of a formal response by the Center, the Center would deem Respondent's email dated July 13, 2006, as the Response on record. The Respondent made no further submission prior to the July 27, 2006 due date. On July 28, 2006, the Center sent an Acknowledgement of Receipt of Response.

The Center appointed Alistair Payne as the sole panelist in this matter on August 9, 2006. 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.

Having considered the case file in this reference the Panel issued the following Procedural Order on August 14, 2006:

“Procedural Order No. 1

Case D2006-0842

Respondent:

The Panel notes that the Respondent has submitted by e-mail an explanation of its use of the name “The Nexxus” for a band together with a list of performances of the band. However there is no supporting documentary evidence of these performances, or of the way in which the band has used the name “The Nexxus” to date, or of future performances and anticipated use of the name generally, including in the context of any website.

Under Paragraph 10 of the Rules, the Panel requests that the Respondent submits within one week by appropriate supporting documentary evidence to demonstrate:

1. the use of the band name “The Nexxus” to date, including evidence of use of the name in relation to the listed performances;

2. any proposed future performance of the band “The Nexxus”;

3. any arrangements for development of a website for the band “The Nexxus” or advertising or published reports of the band’s performances.

The Respondent must submit its supporting evidence together with a signed supporting letter containing the statement required by Paragraph 5 (b) (viii) of the Rules (as set out below), by the close of business on August 21, 2006.

The statement required by Paragraph 5 (b) (viii) of the Rules and for inclusion in the letter follows:

“Respondent certifies that the information contained in its Response is to the best of Respondent’s knowledge complete and accurate, that its Response is not being presented for any improper purpose, such as to harrass, and that the assertions in its Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by good faith and reasonable argument.”

Complainant:

The Complainant may in its discretion submit any further response it seeks to make within a further week to reply to the evidence, if filed or may indicate that it waives its right to make a further response and the Panel may proceed with its decision. The date for submission of a decision by the Panel will be extended accordingly.”

The Respondent provided her Supplemental Response on August 21, 2006 and the Complainant provided its Supplemental Response on August 24, 2006.

 

4. Factual Background

The Complainant purchased the Nexxus branded hair care line within the 12 months preceding the Complaint. As a result, the Complainant became the owner of at least 200 trade mark registrations and applications for trade marks under the name NEXXUS or NEXUS including a Community trade mark which was registered on October 21, 2002. The Complainant also operates the domain name <nexxus.com>.

The Respondent registered the domain name <the-nexxus.com> on April 4, 2006.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it is the owner of at least 220 trade mark registrations and applications for the mark NEXXUS (or NEXUS) and marks which included the NEXXUS (or NEXUS) mark (the “NEXXUS Marks”). The Complainant also asserts that these registrations and applications cover many countries around the world and that the Complainant first registered the mark NEXXUS in the European Union as a Community trade mark in 2002 (having filed its application in 1996). Annex C to the Complaint sets out details of the NEXXUS Marks, which are registered in the name of the Complainant.

The Complainant asserts that through its predecessor in interest it has created and adopted the NEXXUS Marks as unique identifiers for its salon quality hair care products and related goods and services. The Complainant also asserts that it has spent considerable amounts of money, time and effort in securing, developing, promoting, advertising and protecting its world famous NEXXUS Marks. As a result, the Complainant submits that the public associate the NEXXUS Marks with the reputable goods provided by the Complainant and that the NEXXUS Marks are well known in many countries and are entitled to the broad scope of protection reserved for such marks.

The Complainant asserts that it purchased the Nexxus branded hair care line less than a year ago for US$46.5 million with a potential additional US$55 million paid over the next ten years. The Complainant submits that this purchase price is a clear indication that the NEXXUS brand is a strong and powerful brand. The Complainant also asserts that since the Complainant’s purchase of the Nexxus brand, the Nexxus brand of hair care goods have been made available through such retail giants as Walmart, K-Mart and Jewel-OFSC. The Complainant submits that the placement of Nexxus goods on shelves at these stores ensures wide consumer recognition and further bolsters the fame of the NEXXUS Marks.

On the issue of the Respondent’s lack of rights in the Disputed Domain Name and its bad faith in respect of the Disputed Domain Name, the Complainant makes a number of submissions and refers to a number of previous Administrative Panel decisions, details of which are summarised below:-

- The Respondent has constructed knowledge of the Complainant’s trade mark rights prior to the filing of the domain name registration by virtue of the Complainant’s registration of the mark NEXXUS in the European Union and Sweden, the Respondent’s home country area. (Kate Spade, LLC v Darmstadter Designs, WIPO Case No. D2001-1384).

- In light of the fame of the NEXXUS Marks, it is highly unlikely that the Respondent was not aware of the Complainant’s right in the NEXXUS Marks and that its registrations of Disputed Domain Name was for any legitimate reason (Fairmont Hotel Management L.P v. Puts WIPO Case No. D2001-0431 and Madonna Ciccone p/k/a Madonna v. Dan Parisi / Madonna.com WIPO Case No. D2000-0847).

- The Respondent has registered the domain name intending to either (1) profit from the sale of the Disputed Domain Name by selling it to the Complainant; or (2) profit from the sale of the Disputed Domain Name by selling it to a competitor of the Complainant so that the competitor could divert sales; (3) develop his own website(s) using the NEXXUS Marks with the intention to divert customers away from the Complainant, cause confusion in the marketplace, or otherwise trade on the goodwill and name of the Complainant; and/or (4) prevent the Complainant from registering the Disputed Domain Name for its own use in its business.

- The Respondent registered the Disputed Domain Name knowing that it is not the lawful owner of the trade mark upon which the Disputed Domain Name is based.

- There is no evidence that the Respondent registered the Disputed Domain Name for any bona fide reason.

- Although there is no present content on the website which uses the Disputed Domain Name, previous WIPO Administrative Panels have found that bad faith can exist even in cases of passive holding of domain names because “a complainant is deprived of the use of the disputed domain name and will always be concerned about the possibility of a confusing future site.” (Baccarat SA v. MSL International, Inc., WIPO Case No. D2005-0048).

- Previous WIPO Administrative Panels have found that passive holding is evidence of bad faith when a “Complainant’s trademark has a strong reputation and is widely known” (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

- It is a reasonable conclusion that the Respondent registered, and is using and holding the domain name for some bad faith reason, for example to profit from the sale of the domain name to another party and/or to eventually use the site to “catch” internet uses looking for the Complainant and/or Complainant services and/or products.

- There is no credible reason why the Respondent would register a typosquat version of the Complainant’s domain name that is closely associated with the Complainant’s famous mark.

- The Respondent has no legitimate interest in or to the term Nexxus, or any variations thereof, and has not had any legitimate rights at any time.

- There is no evidence that the Respondent operates under a trade name incorporating the terms, or any formative thereof, nor is the Respondent known by any form of the word “Nexxus”.

- The Respondent does not use any trade marks that contain the word “Nexxus” or any formative thereof.

- It is inescapable that the Respondent was aware of the NEXXUS Marks at the time the Respondent registered the Disputed Domain Name and that the Respondent submitted its domain name registration with full knowledge that the Disputed Domain Name infringed on a valuable intellectual property rights of another.

- When a trade mark is famous “the very use of the mark in the form of a domain name by a third party suggests bad faith” (Microsoft Corp. v. Charlie Brown, WIPO Case No. D2001-0362 and Microsoft Corporation v. 3D Roulette, WIPO Case No. D2004-0232).

- The Respondent is not using the Disputed Domain Name in connection with a bone fide offering of goods, or a legitimate non-commercial or fair use and has not done so.

- The Respondent has acquired the Disputed Domain Name with no apparent intention of utilising it in connection with the provision of legitimate goods or services. Therefore, it appears clear that the Respondent is attempting to use the Disputed Domain Name to profit from its bad faith intentions.

B. Respondent

The Respondent asserts that in late 2006 herself and a friend started a band which they chose to call “The Nexxus”. The Respondent also asserts that the name was chosen because the band is a platform where a lot of creative people meet and do music.

The Respondent asserted that the band performed at various clubs in Stockholm, Sweden, such as:

Club Boarderline, 2005-06-30

Club Musslan, 2006-07-15

Club Stampen, 2005-08-10

Club Ostkaka, 2005-08-16

Club Osaka vs Tokyo, 2005-08-20

Street marknad, 2005-08-25

Street, 2005-09-12

Bazouera invigning, 2005-10-20

Berns, 2005-10-25

Club Debonair, 2005-12-11

The spy bar, 2006-01-17

The Respondent asserts that when she registered the domain name she did not know that there was a company called Nexxus who have products for hair.

Finally, the Respondent submits that as she is a member of a band and performs music, she does not have anything to do with hair and the products sold by the Complainant. As a result, the Respondent does not believe she could benefit from having a domain name slightly similar to the Complainant’s trade marks.

C. Respondent’s Supplemental Response

Pursuant to the Administrative Panel’s Procedural Order No. 1, the Respondent furnished further evidence in support of the Respondent’s claims, including one piece of documentary evidence demonstrating the use of the band name “The Nexxus” to date. The Respondents supplemental responses are set out below under the relevant request set out in the Administrative Panel’s Procedural Order No. 1 as follows:

(i) Evidence of use of the name in relation to the list of performances in the Response.

The Respondent asserted that as her colleague and herself are involved in other projects for the first three quarters of 2006, the band name “The Nexxus” did not appear in media during this time. However, the Respondent asserted that in late 2005 the band appeared in a Stockholm newspaper article “Mitt i City” where the journalist spelt the band name with one ‘x’. In the same interview the journalist announced the band’s performance at Musslan. The Respondent attached a copy of this article, which is written in Swedish.

The Respondent then asserted that any other performances that the band has done so far have been small and spontaneous, as guests to other bands. Therefore, the Respondent submits that there is no documentary evidence that connect the band name “The Nexxus” to these performances.

(ii) Documentary evidence to demonstrate any proposed future performance of the band “The Nexxus”

The Respondent asserted that as she and her colleague are currently recording material they will focus on performing when their album is finished.

(iii) Documentary evidence to demonstrate any arrangements for development of the website for the band “The Nexxus” or advertising or published reports of the band’s performances

The Respondent asserted that she does not want to develop the website until her album is finished. The Respondent submits that this is because she wants the website to reflect the music and the album that the Respondent has made.

D. Complainant’s Supplemental Response

Pursuant to the Administrative Panel’s Procedure Order No. 1, the Complainant furnished its response to the Respondent’s Supplemental Response. The Complainant made the following submissions:

- The piece of evidence that the Respondent submitted, i.e. the Swedish newspaper article, was (1) undated; (2) not in the language of the proceedings, (nor was a translation provided); and (3) supposedly misspells the Respondent’s name for its band and also seems to refer to Nexus Cooperation (which is left unexplained).

- The Respondent has failed to certify the veracity of its response, despite being reminded to do so.

- The Respondent claims that it has played in most of the venues but does not have a single printed piece of material in support of its assertion.

- The Respondent claims to be in the process of producing an album, but has also submitted no proof of this.

- In response to the Respondent’s assertion that it had not heard of the Nexxus products in Sweden, the Complainant provided evidence of two online message boards where users with a hometown listed in Sweden referred to and commented on products bearing the NEXXUS Marks.

- The Respondent had not made any bona fide showing of proper use of the word “Nexxus” or “The Nexxus”.

 

6. Discussion and Findings

It is necessary for the Complainant, if it is to succeed in this Administrative Proceeding, to prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:-

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

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

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy. The Panel also notes that pursuant to Paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate if a party does not comply with a request from the Panel.

A. Identical or Confusingly Similar

There are two separate elements that the Complainant must prove under Paragraph 4(a)(i) of the Policy. First, that the Complainant has rights in a trade mark or service mark and second, that the Disputed Domain Name is identical or confusingly similar to the trade mark in which the Complainant has rights.

The Panel notes that the Complainant has provided evidence at Annex C to the Complaint that it is the proprietor of various registered trade marks, the subject matter of the NEXXUS Marks. The NEXXUS Marks have various registration dates between 1985 and 2006. The Complainant has also provided evidence of considerable expenditure in promoting and advertising the NEXXUS Marks. Accordingly, the Complainant has established that it has both registered and common law rights in the NEXXUS Marks.

The Disputed Domain Name is not identical to any of the NEXXUS Marks. However, WIPO Administrative Panels have repeatedly held that where a domain name has been invented by a respondent by adding the word “the” to a distinctive mark, in which a Complainant has rights, then such a domain name is to be considered confusingly similar to the Complainant’s mark for the purposes of Paragraph 4(a)(i) of the Policy. See for example: Triple Crown Productions, LLC v. 4URLS.COM, (WIPO Case No. D2006-0083) ,Micron Electronics, Inc. v New World Concepts, Inc, (WIPO Case No. D2001-0225) and Crystal Cathedrals Ministries, Inc. v. Edu Stuivenberg dba Bedroom Graphics , ( WIPO Case No. D2002-0102 ).

Accordingly, the Panel finds that the Complaint fulfills Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The burden of proof rests with the Complainant to establish at least a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and it is then for the Respondent to rebut this assertion.

The Panel accepts the Complainant’s assertions that there is no relationship between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant nor has it otherwise obtained any authorisation to use the NEXXUS Marks or apply for the Disputed Domain Name incorporating the NEXXUS Marks. The Complainant further asserts that the Respondent has provided no evidence that Respondent registered the Disputed Domain Name for a bona fide reason or has made a bona fide use of the Disputed Domain Name.

In order for the Respondent to demonstrate her rights or legitimate interests to the Disputed Domain Name, the Respondent may establish any of the following elements, provided as non-exhaustive examples under Paragraph 4(c) of the Policy, as follows:-

(i) that the Respondent used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services;

(ii) that the Respondent has been commonly known by the Disputed Domain Name; or

(iii) that the Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the NEXXUS Marks.

The Respondent has had ample opportunity to provide the Panel with appropriate evidence of use, or anticipated use of the Disputed Domain Name and of “The Nexxus” as the name for her band. However the only substantive evidence provided is a list of band performance dates and an undated, unattributed copy of a newspaper article in the Swedish language which makes reference to “The Nexus”. No other evidence has been provided to the Panel in relation to any of the matters specifically identified in Procedural Order No. 1. Further, the Respondent has failed to provide the certification of accuracy of response as specifically requested and as required under Paragraph 5 (b) (viii) of the Rules.

Based on the significant degree of renown of the NEXXUS Marks, the fact that the word “Nexxus” is an invented word and the Respondent’s failure to adequately provide documentary evidence of either (i) the circumstances in which the Respondent’s band name was chosen and has subsequently been used, or (ii) any arrangements for development of a website using the Disputed Domain Name, or (iii) any advertising or documentary evidence of the band’s performances, other than the undated and unnattributed newspaper article in Swedish and considering the Respondent’s failure to provide the requested certification of accuracy of response, the Panel infers that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.

Accordingly, the Panel finds that the Complaint fulfills Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, without limitation, any of which if found by the Panel to be present shall be evidence of the registration or subsequent use of the Disputed Domain Name in bad faith. The Panel notes that the Complainant need only prove one of the four grounds set out in Paragraph 4(b) of the Policy, or another grounds leading to a finding of bad faith by the Panel, in order to succeed in demonstrating that the Respondent has registered and is using the Disputed Domain Name in bad faith.

The NEXXUS Marks have considerable renown attaching to them in the United States and worldwide and were long established prior to the registration by the Respondent of the Disputed Domain Name. The Panel is of the view that at the time the Respondent registered the Disputed Domain Name, the Respondent is more than likely, on the balance of probabilities, to have been aware of the NEXXUS Marks or brands.

The Disputed Domain Name does not resolve to a website or other on-line presence. Nor is there any evidence that the Respondent has attempted to sell, rent or otherwise transfer the Disputed Domain Name to the Complainant, a competitor of the Complainant, or any other third party.

Therefore, the Panel must consider whether the passive holding of the Disputed Domain Name by the Respondent amounts to the Respondent acting in bad faith. Such passive holding has been consistently held to amount to bad faith in appropriate circumstances, for example Brown Thomas & company Limited v Domain Reservations ( WIPO Case No. D2001-0592 ), Dell Computer Corporation v. Logo Excellence (WIPO Case No. D2001-0361 ), and Telstra Corporation Limited v. Nuclear Marshmallows ( WIPO Case No. D2000-0003 ).

In Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003 ) the panel held that the question of whether passive holding of a website can amount to bad faith could not be answered in the abstract but would depend on the particular facts of a specific case. In that decision, the panel held that the domain name in that case was being used in bad faith where (i) the complainant’s trade mark had a strong reputation and is widely known, (ii) there was no evidence of any use of the domain name provided by the respondent, (iii) the respondent attempted to conceal its identity and (iv) that it was not possible for the Panel in that case to conceive of any plausible or active use of the domain name by the respondent that would not amount to passing off and/or trade mark infringement.

A more recent decision in Autoshop 2 Di Battaglia Ferruccio C. S.N.C v. Willamette RF Inc. ( WIPO Case No. D2004-0250 ), noted that the Telstra decision does not apply to every case involving a passive holding on the basis that each registration of a domain name together with inaction amounts to bad faith registration. In that case the requirements in Telstra were considered. It was held that (i) while the respondent may very well have known about the reputation of the company’s trade mark in that case, the trade marks did not have a reputation as strong as the Telstra Corporation. Moreover, the trade mark in the Telstra case was “extremely famous” in the geographical area of both the complainant and respondent, (ii) the respondent in that case was held to have provided “verifiable evidence” of contemplated bona fide use and, (iii) the complainant had made no assertion that the Respondent had done anything to conceal its true identity.

The significance of this decision is that there was no knowledge, on the part of the respondent, of the trade mark in the disputed name, in their country or in other jurisdictions. The respondent had undertaken searches in the US Patent and Trademark Registry that had not identified any application or registration of a trade mark or service mark. This was a key element in the decision as it proved “diligence” on the part of the respondent in registering the domain name.

In the present case it is unclear whether any such diligence was exercised in registering the disputed domain name. As no evidence of searches undertaken has been presented to the Panel, it must be presumed that no effort was made to do so. Furthermore, the Respondent in this case has not provided any verifiable evidence of contemplated bona fide use. The only evidence provided is unverifiable and is based on the Respondent’s word and an unattributed newspaper article.

The Panel notes that the NEXXUS Marks have a significant reputation and are widely known in many parts of the world, including in Sweden where the Respondent is resident. The Respondent says that she plans on using the domain name for a prospective website for her band but has provided no evidence of actual use of the domain name, nor verifiable evidence of planned use. Although she has not attempted to conceal her identity and there is no other indicator of obvious bad faith, her failure to respond to Procedural Order No. 1 as set out above does not assist in negating an inference of bad faith. If the Respondent does use the Disputed Domain Name then provided that the NEXXUS Marks are reputed in Sweden it is possible that such use, even for dissimilar services, might be held to unfairly take advantage of the marks such that there is trade mark infringement.

Due to the apparent repute of the NEXXUS marks, the passive nature of the holding of the Disputed Domain Name and the Respondent’s consistent failure to provide verifiable evidence negating an inference of bad faith, the Panel infers bad faith and finds that the Complaint fulfills Paragraph 4(a)(iii) of the Policy.

 

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, <the-nexxus.com> be transferred to the Complainant.

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Alistair Payne
Sole Panelist

Dated: September 18, 2006