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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mirabella Beauty Products, LLC v. Mrs Jello, LLC

Case No. D2009-0673

1. The Parties

The Complainant is Mirabella Beauty Products, LLC of Valencia, California, United States of America, represented by Kleinberg & Lerner, LLP, United States of America.

The Respondent is Mrs Jello, LLC of Livingston, New Jersey, United States of America, represented by Kenyon & Kenyon, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mirabella.com> (the "Domain Name") is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 22, 2009. On May 22, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name, after ascertaining that the registrar named in the Complaint was no longer the registrar of the Domain Name. On May 27, 2009, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on June 2, 2009, reflecting the new registrar. The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 June 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response June 28, 2009. The Response was filed with the Center June 27, 2009.

The Center appointed W. Scott Blackmer, Warwick A. Rothnie, and Diane Cabell as panelists in this matter on July 16, 2009. The Panel finds that it was properly constituted. Each member of 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.

4. Factual Background

The Complainant is a California limited liability company that manufactures and sells women`s beauty products. According to its website at "www.mirabellabeauty.com", the company was "conceived and developed in 2001". The website and the Complaint indicate that the Complainant sells its products to hundreds of beauty salons and spas throughout the United States of America.

The Complainant holds United States Trademark Registration No. 2935588 (registered March 22, 2005) for the standard character mark MIRABELLA, on the Supplemental Register of the United States Patent and Trademark Office (USPTO). The registration shows April 2002 as the time of first use in commerce.

The Domain Name was created on August 10, 1995. The current registrant, the Respondent, is a New Jersey limited liability company with its principal place of business in Livingston, New Jersey, United States of America. The Registrar`s WhoIs database lists a contact email address with an "exoticdomains.net" domain name.

The Response attaches the Declaration of a Mr. Lichtman, who identifies himself as the founder and principal of the Respondent. Mr. Lichtman states that the Respondent is in the business of acquiring domain names that incorporate generic words or phrases and developing them commercially to generate "click-through revenue". According to the Response, the Respondent has registered numerous domain names based on women`s names, such as <erica.com> and <lizzie.tv>, and uses them for "directories of adult content." Mr. Lichtman states that he selected the Domain Name "because it incorporates the generic term ‘mira+bella,` which has connotations of prettiness and beauty in 6 languages". He notes that "Mirabella" is a woman`s name and says that the Respondent decided to use it in connection with "a directory of adult entertainment services."

The Response and Declaration do not state that the Respondent is the original registrant of the Domain Name or indicate when the Respondent acquired the Domain Name. Archived versions of the website to which the Domain Name resolved historically, available through the Internet Archive`s Wayback Machine at "www.archive.org", show that the Domain Name resolved to website displaying third-party advertising as early as November 2005. This advertising focused on travel services and holiday destinations.

The Domain Name currently resolves to a pay-per-click advertising portal with "sponsored results" focused on "adult" goods and services and classified advertisements under such headings as "Adult Swingers", "Adult Photo", "Russian Brides", "Male Strippers", "Gay Men", and "Nude Personals".

In February 2009, a representative of the Complainant offered to purchase the Domain Name, without naming the Complainant. The Respondent directed the individual to a third-party website that estimates the monetary value of a domain name at "www.estibot.com". That website generated an estimated value of USD 14,000. The Complainant`s representative subsequently offered USD 1,000 to acquire the Domain Name, which the Respondent rejected. The email correspondence does not mention the Complainant or its trademark.

5. Parties` Contentions

A. Complainant

The Complainant observes that the Domain Name is identical to its MIRABELLA mark and argues that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant infers bad faith from the Respondent`s commercial use of the Domain Name for adult or pornographic content, the fact that the Respondent and persons (or aliases) apparently associated with the Respondent have been ordered to transfer domain names in previous UDRP proceedings, and the Respondent`s conduct in replying to the offer to purchase the Domain Name.

B. Respondent

The Respondent claims a legitimate interest in using a domain name based on a woman`s name that might be translated as "good-looking" for an adult advertising directory website. The Respondent observes that the claimed mark is registered on the Supplemental Register of the United States Patent and Trademark Office and argues that the Complainant has not shown that the mark is distinctive or likely to be known to the Respondent. The Respondent denies prior knowledge of the Complainant or its mark and points out that the Domain Name was registered some seven years before the Complainant itself claims first use of the MIRABELLA mark.

The Respondent argues that the Panel should make a finding of attempted "reverse domain name hijacking" by the Complainant.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Name, the Complainant must demonstrate each of the following:

(i) the Domain Name is identical or confusingly similar to a trademark 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 Domain Name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules,

"A Panel shall 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."

A. Identical or Confusingly Similar

The Domain Name is identical to the Complainant`s registered MIRABELLA trademark, disregarding the nondistinctive ".com" top-level domain name. That mark is not registered on the USPTO Primary Register, however, but on the Supplemental Register. As explained in Advance News Service Inc. v. Vertical Axis, Inc. / Religionnewsservice.com, WIPO Case No. D2008-1475,

"Under United States law, marks that are merely descriptive, and that have not been shown to have acquired distinctiveness, may be registered on the Supplemental Register, but that registration does not confer any of the usual presumptions that accompany a mark registered on the Principal register (such as prima facie evidence of validity, ownership, and distinctiveness). Thus, the fact of a Supplemental Registration is no evidence whatsoever the Complainant owns trademark rights . . . See Rodale, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00153 (June 28, 2002)."

Similarly, the panel in Oil Changer, Inc. v. Name Administration, Inc., WIPO Case No. D2005-0530, concluded that registration on the USPTO Secondary Register reflected a recognition that the mark in question was not "inherently distinctive at the time of application for registration" and "had not yet acquired secondary meaning", citing 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §19.43, at 19-83 (4^th ed. 1998).

Registration on the Supplemental Register offers some procedural and jurisdictional benefits (see 15 U.S.C. §§ 1091-1096), but in any infringement action in the United States of America it must still be established that the mark has acquired sufficient secondary meaning to be distinctive and protectable at common law. The owner of a mark registered on the Secondary Register may petition to transfer the registration of the mark, after five years of continuous use, to the USPTO`s Primary Register. It does not appear from the record in this proceeding, or from the database operated by the USPTO, that the mark in question has been transferred to the Primary Register.

The Policy does not require a registered mark, and a complainant in a UDRP proceeding may adduce evidence demonstrating that an unregistered mark, or a mark registered on the USPTO`s Supplemental Register, has in fact acquired distinctiveness sufficient for common law protection in a relevant jurisdiction. The Complainant has furnished little evidence to support such a finding in this proceeding, apart from its claimed use of the mark since April 2002, its nonspecific statement that its products are placed in hundreds of beauty salons, and the example of advertising on its current website.

The Panel could conceivably request further evidence to support the Complainant`s claim that the mark is protected at common law. However, given the Panel`s conclusions on the second and third elements of the Complaint, it is not necessary to determine whether the Complainant can satisfy the first element of the Complaint with proof that the MIRABELLA mark has acquired distinctiveness sufficient for common law recognition.

B. Rights or Legitimate Interests

The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Name, including the following:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services…"

The Complainant contends that the Respondent is merely "squatting" and has not used the Domain Name "in connection with any goods and services". It appears from the record, however, that the Respondent has made commercial use of the Domain Name, before notice of this dispute, to advertise the goods and services of third parties on a pay-per-click ("PPC") basis. The Complainant has not demonstrated that the Respondent`s advertising of "adult entertainment services" is illegal, which might call into question whether it is a use in connection with a bona fide offering of goods or services.

The Complainant also argues that the Respondent`s use of the Domain Name is not in connection with a bona fide commercial offering because "Respondent is tarnishing Complainant`s fine and upstanding reputation" and "misleadingly diverting customers to other sites". Such a conclusion would require evidence indicating that the Respondent had the Complainant`s mark in contemplation, which the Respondent denies and, as discussed further below, the record does not support.

Where the Domain Name corresponds to a woman`s given name, "Mirabella", which could also mean "look beautiful" in Spanish, it is not implausible that the Respondent chose the name, as it has other women`s names, for a website advertising adult goods and services. Other UDRP panels have accepted that such generic use of a domain name for paid advertising can represent a legitimate commercial interest in the domain name. As the panel wrote in mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141, "[i]f the links on a given landing page are truly based on the generic value of the domain name, such use may be bona fide because there are no trademark rights implicated by the landing page. See, e.g., Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 285459 (PPC landing pages are legitimate if ‘the domain names have been registered because of their attraction as dictionary words and not because of their value as trademarks`)."

Here, the Respondent has a plausible claim to a generic interest in the Domain Name, and the Complainant has not established the likelihood that the Respondent registered and used the Domain Name in contemplation of the Complainant`s MIRABELLA mark, in an effort to tarnish the Complainant`s reputation or mislead Internet users.

The Panel concludes that the Complainant has failed to establish the second element of the Complaint.

C. Registered and Used in Bad Faith

The Policy provides a non-exhaustive list of instances of bad faith in the registration and use of a domain name, including three on which the Complainant implicitly relies:

(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or . . .

(iii) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.

The Complainant`s reliance on the first example is misplaced. There is no evidence that the Respondent initiated sales discussions. The Respondent declined a purchase offer from the Complainant`s representative (who did not identify the Complainant or its interest) more than thirteen years after the Domain Name was registered and after the Respondent had been using it for PPC advertising for some time. In these circumstances, it is not credible that the Domain Name was registered or acquired "primarily" for the purpose of selling it to the Complainant or a competitor for an extravagant sum.

Similarly flawed are the Complainant`s arguments based on the theory that the Domain Name was registered to prevent the Complainant from registering a domain name corresponding to its mark, consistent with a pattern of such conduct, or to mislead Internet users. That depends, again, on the probability that the Respondent targeted the Complainant`s mark.

To support its contention that the Respondent is a serial cybersquatter, the Complainant states that the Respondent is associated with a domain parking service at "www.domainspa.com", "thus squatting on domains". The Respondent does not deny an association with that domain parking service. But offering a domain parking service is not itself evidence of a pattern of bad faith registration and use of domain names. More to the point, the Complainant cites two UDRP decisions finding bad faith on the part of the Respondent or a person associated with the Respondent (again, the Respondent does not deny the association): Eurochannel, Inc. (f/k/a Multithematiques, Inc.) v. Papete.com, WIPO Case No. D2005-0318 and A.V.M. Software, Inc. d/b/a Paltalk v. Papete.com and Igal Lichtman a/k/a Mrs. Jello LLC a/k/a Exoticdomains.net a/k/a domainsspa.com, WIPO Case No. D2005-0917. In those cases, however, the disputed domain names (<eurochannel.com> and <mypaltalk.com>, respectively) were identical to distinctive, well-known, registered marks, warranting the conclusion that the domain names targeted the marks in order to mislead Internet users.

Here, the Domain Name is of a generic nature, and the record does not support a conclusion that the Respondent had the Complainant`s mark in contemplation when selecting the Domain Name. The Respondent uses the Domain Name for a website that advertises "adult entertainment". This use is not palpably irrelevant for a domain name based on a woman`s name, and the Respondent makes similar use of other domain names based on women`s names. The Respondent expressly denies prior knowledge of the Complainant and its mark. This is not implausible, because the Complainant has failed to demonstrate that its mark was well known in the United States of America, where both parties are located, when the Respondent registered the Domain Name. The Complainant`s trademark registration claims first use of the mark in April 2002, nearly seven years after the Domain Name was first registered in 1995. The Complainant has not furnished evidence (such as might be obtained from a commercial domain name registration history service) to show if and when the Respondent acquired the Domain Name after its creation in 1995. Indeed, the Complainant has not established on this record that the mark, registered on the USPTO Supplemental Register, is sufficiently distinctive to be protected at common law even today.

On the current record, therefore, there is no basis for concluding that the Respondent registered the Domain Name to take advantage of the Complainant`s claimed mark or to deny the Complainant the use of a corresponding domain name.

The Panel concludes that the Complainant has not established the third element of the Complaint.

D. Reverse Domain Name Hijacking

Paragraph 15(e) of the Rules provides as follows:

"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 was brought primarily 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 Rules do not provide for monetary remedies or specific relief in such a case.

Paragraph 3(b)(xiv) of the Rules requires a UDRP complainant to certify as follows:

"Complainant certifies that the information contained in this Complaint is to the best of Complainant`s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."

That certification is made in paragraph 21 of the present Complaint.

Omission of relevant facts, contrary to this certification, can constitute an abuse of the UDRP procedure. See G. A. Modefine S.A. v. A.R. Mani, WIPO Case No. D2001-0537.

Here, the Respondent urges a declaration of reverse domain name hijacking on the ground that the Complaint asserted the Respondent`s bad faith while failing to address the fact that the Domain Name was first registered several years before the Complainant began to use its marks. See Dori Media International GmbH v. Sikreto LLC, WIPO Case No. D2007-1525 (reverse domain name hijacking found where the complainant clearly had no trademark rights at the time the respondent registered the domain name). This is an egregious oversight, and the Complainant did not cite any evidence that the Respondent itself acquired the Domain Name after the Complainant`s mark was established (for example, evidence that the Respondent was not incorporated until a later date, or results from a domain name registration history search). The Panel notes, however, that the Respondent does not claim to be the original registrant and does not reveal when it acquired the Domain Name. The Respondent says that it is in the business of acquiring domain names for commercial development. Archived versions of the website associated with the Domain Name as recently as February 2008 are quite different from the current one and not consistent with the Respondent`s stated business plan of using the Domain Name to advertise adult entertainment. Thus, while the Complainant has not met its burden of establishing the Respondent`s bad faith, it cannot be concluded on this record that such a showing was patently impossible as the Respondent suggests.

Apart from the Complainant`s failure to deal with the obvious timing issue for the third element of the Complaint, there is another fundamental issue that was entirely in the Complainant`s power to disclose and address. The Complaint is based on trademark registrations on the USPTO Supplemental Register. The Complaint fails to mention this critical fact or supply evidence of distinctiveness sufficient for common law protection. Thus, the Complainant filed a Complaint lacking even the minima for grounding a UDRP proceeding.

The Panel concludes, therefore, that the Complaint was filed in bad faith within the meaning of paragraph 15(e) of the Rules and constitutes an abuse of the UDRP proceeding.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: July 29, 2009