Domain name - U.S. Service mark - Likelihood of confusion - Bad faith registration.

Complainant is the owner of the Service Mark "BEAUTYCO" . Complainant has expended time, effort and money in promoting the use of the name "Beautyco" and "Beautyco, Inc." for business purposes for more than twenty years. Respondent registered the domain name "BEAUTYCO.COM". There is no evidence in the record that Respondent has used the domain name for any purpose. The respondent did not defend this action.

Held, Name Transferred to Complainant.

There is a likelihood of consumer confusion and mistake if the name "BEAUTYCO.COM" is used by an entity other than Complainant. The domain name "BEAUTYCO.COM" is identical with the letters appearing in Complainant's Service Mark, and is the same as the Complainant's corporate name in which it has rights, and to which Respondent has no rights or legitimate interests.  Respondent registered and acquired the domain name "BEAUTYCO.COM" in bad faith. Respondent offered to sell the domain name to Complainant.  Respondent registered the domain name "long after the name "Beautyco" and the Service Mark "Beautyco" had been used and promoted by Complainant for a numbers of years.  Respondent knew or should have known of the Complainant's use of the name and Service Mark before registering the domain name. Respondent knew or should have known that any use it might put for the domain name might and probably would create confusion with Complainant's Service Mark. 

Policies referred to

ICANN  Uniform Domain Name Dispute Resolution Policy
ICANN Rules for Uniform Domain Name Dispute Resolution Policy

Registration Agreements referred to
Network Solutions Service Agreement Version 4.0

Cases referred to
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Panel Decision referred to
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Atkinson, Jr., Arbitrator:-

DOMAIN NAME DISPUTE DECISION

The above entitled matter came on for hearing on April 10, 2000 before Tyrus R. Atkinson, Jr. as sole arbitrator on the Complaint of Beautyco, Inc., hereafter "Complainant", against Mini Malls of America, hereafter "Respondent". Complainant was represented by Peter B. Sawin, Vice President of Beautyco, Inc., 2600 S. Meridian Ave, Oklahoma City, OK 73108. There was no representation on behalf of Respondent. Upon the written record, the following Decision is made.

PROCEDURAL FINDINGS

An administrative proceeding was commenced by Complainant against Respondent pursuant to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICAAN") on February 28, 2000.

A Complaint was received by the National Arbitration Forum on March 6, 2000.
By revision of the Complaint dated March 9, 2000, Complainant certified that it served Respondent with a copy of the Complaint on or about March 8, 2000.

The formal date of the commencement of the administrative proceeding was March 9, 2000.
The National Arbitration Forum notified Respondent to file a Response on or before April 3, 2000. No Response was filed by Respondent within the required time. Respondent is in default.
The National Arbitration Forum notified Network Solutions, Inc. of the Commencement and the Complaint on March 19, 2000.

Network Solutions, Inc. verified that it is Registrar of the domain name "BEAUTYCO.COM", that the Registrant is Mini Malls of America (BEAUTYCO2.DOM), 1012 North Flood Street, Norman OK 73069, verified that the Registrant, Mini Malls of America (BEAUTYCO2-DOM) is bound by the Network Solutions Service Agreement Version 4.0, and further verified that the domain name is in active status.

The National Arbitration Forum complied in this case with the procedural requirements set out in the Policy and Rules adopted by ICAAN.

STATEMENT OF THE CASE

Complainant, a corporation, contends that the domain name "beautyco.com" should be transferred to Complainant from Respondent who presently holds the domain name "beautyco.com" and has held the said domain name since October 24, 1997.

Complainant contends that it has used the name "Beautyco" since November 25, 1979 in its business. Complainant contends that it registered with the United States Patent and Trademark office the trademark "Beautyco" for use by its retail stores in the sale of hair care and beauty products. Complainant further contends that Respondent has no legitimate interest in the name "beautyco" and that Respondent has offered to sell the name "beautyco.com" to Complainant for a sum in excess of the registration costs.
FINDINGS OF FACT

1. Complainant is the owner of the Service Mark "BEAUTYCO" which was registered on May 5, 1992 by the United States Patent and Trademark Office.
2. Complainant has used the name "Beautyco" since November 25, 1979.
3. Complainant's corporate name, Beautyco, Inc., has been used in business for a number of years.
4. Complainant has expended time, effort and money in promoting the use of the name "Beautyco" and "Beautyco, Inc." for business purposes for more than twenty (20) years. Complainant has a substantial investment in the name and Service Mark. Complainant's products and services are and have been associated with the name and Service Mark. As result of these efforts, the name and Service Mark has become associated with Complainant and represents property of significant value to Complainant.
5. There is a likelihood of consumer confusion and mistake if the name "BEAUTYCO.COM" is used by an entity other than Complainant.
6. Complainant contacted Respondent with a request that the domain name "BEAUTYCO.COM" be transferred to Complainant. Respondent offered to sell the domain name to Complainant for the sum of $2000.00.
7. There is no evidence in the Record to show that Respondent has used the domain name in any commercial manner. There is no evidence in the record that Respondent has used the domain name for any purpose.
8. Respondent registered the domain name "BEAUTYCO.COM" long after the name "Beautyco" and the Service Mark "Beautyco" had been used and promoted by Complainant for a numbers of years.
9. Respondent knew or should have known of the Complainant's use of the name and Service Mark before registering the domain name. Respondent knew or should have known that any use it might put for the domain name might and probably would create confusion with Complainant's Service Mark.
10. Respondent has no legitimate or valid interest in the domain name "BEAUTYCO.COM". Respondent's retention of said domain name causes and would cause confusion and lessen Complainant's rights to use and profit by its registered Service Mark and established use of "Beautyco".

CONCLUSIONS
1. The domain name "BEAUTYCO.COM" registered by Respondent Network Solutions, Inc. is identical with the letters appearing in Complainant's Service Mark, and is the same as the Complainant's corporate name in which it has rights, and to which Respondent has no rights or legitimate interests.
2. Respondent registered and acquired the domain name "BEAUTYCO.COM" in bad faith.

DECISION

THE DOMAIN NAME "BEAUTYCO.COM" REGISTERED BY RESPONDENT, MINI MALLS OF AMERICA, INC., BE TRANSFERRED TO COMPLAINANT, BEAUTYCO, INC.

The undersigned certified that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this case. The undersigned certifies that he was impartial and decided the case on the written Record presented for decision.

This 10th day of April, 2000.
Tyrus R. Atkinson, Jr., Arbitrator