Not all domain name disputes need to be resolved through UDRP proceedings. There are steps you can take before you file a UDRP complaint. Some cases of domain name infringement can be handled with a simple Cease & Desist, or in this case, an email. Continue reading to learn how the largest beauty retailer in the United States lost a UDRP filing that had all the making of a successful case.
The Facts of the UDRP Case
This proceeding, reported by the National Arbitration Forum (adrforum), was between the company Ulta Salon, Cosmetics & Fragrance, Inc. and a registrant by the name of Hussain Ali Mirza.
Complainant – Ulta Salon
- Ulta is the largest beauty retailer in the United States, operating 1,299 retail stores and an online storefront.
- Ulta has used ULTA and related marks in connection with goods and services since 1990.
- Ulta owns numerous United States trademark registrations, including registrations for ULTA in standard character form and registrations in other jurisdictions worldwide.
Respondent – Hussain Ali Mirza
- Hussain registered the disputed domain name ultachat.com using a private registration service that redacted his personal information in September 2021.
- The domain name resolves to a Godaddy landing page.
- The landing page contains links to third-party websites in various categories, including “Beauty Hair Salon,” “Grocery Shopping,” “Beauty Salons,” and “Ulta Hair Salon,” with links to direct competitors of Ulta.
- Hussain states without evidence that:
- He selected the disputed domain name as a possible domain for a future business venture “chat solution” unrelated to Ulta’s business.
- “Ulta” translates to “upside-down” in Hindi and is suggestive of various attributes of his product relating to the automotive space.
- He also registered other domain names as potential candidates for the product. Ultimately, a different name was selected.
- He does not intend to renew the disputed domain name’s registration, set to expire later this year.
- In an email dated March 3, 2022, sent to the Forum and Ulta’s counsel, the Respondent offered to transfer the domain name to Ulta, but he had not received a response.
Why is Ulta requesting that the domain name be transferred from the Respondent?
Ulta contends that the disputed domain name ultachat.com is confusingly similar to its ULTA trademark, that Respondent lacks rights or legitimate interests in the domain name, and that the domain was registered and is being used in bad faith.
The Complaint
For a successful UDRP proceeding, the Complainant has to prove three items:
1. Complainant must prove the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The name ultachat.com incorporates Ulta’s registered ULTA trademark. Adding the generic term “chat” and the “.com” top-level domain does not create enough differentiation between the domain name and trademark.
The Panel considers the disputed domain name to be confusingly similar to a mark in which Ulta has rights.
2. Complainant must prove the Respondent has no rights or legitimate interest in respect of the domain name.
The name ultachat.com incorporates Ulta’s registered trademark 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.
Respondent has failed to come forward with any evidence of such rights or interests, therefore, the Panel finds that Ulta has proved that Respondent lacks rights or legitimate interests in the disputed domain name.
3. Complainant must prove the domain name was registered and is being used in bad faith.
The Panel does not consider the fact that the disputed domain name was registered in the name of a privacy registration service as an indication of bad faith. Many domain owners might want to keep future business ventures private, and some domain registrars mask registration data for purposes of GDPR.
The name ultachat.com is being used to display a registrar-generated parking page that includes links to competitors of Ulta. The Panel is reluctant to place substantial weight on that circumstance in this case, in light of Respondent’s plausible explanation that the domain name was registered as a contender for a future business venture.
The Respondent offered to transfer the domain name to Ulta’s counsel (to which Ulta does not appear to have responded). Additionally, there is no indication that Respondent was seeking payment in exchange for transferring the domain name to Ulta.
The Panel finds that Ulta has not proved that the disputed domain name was registered and is being used in bad faith.
The Finding: Complaint Denied
All three elements required under UDRP were not met, so the Panel concluded that the domain name remains in Respondent’s control.
This case is interesting and another example of how it is essential to prove all three elements to win, even if you believe you have it in the bag. Since Ulta did not bother to respond to the Respondent who offered to transfer the domain name, the Panel used that against Ulta as “evidence” there was no bad faith in play.
If Ulta had accepted Respondent’s offer to transfer, they could have received the domain and got back a refund from the WIPO filing. Instead, they lost this UDRP and gave negotiating power back to Respondent if they wanted to buy this domain, or they will be forced to throw more money into this dispute to appeal it. The lesson learned here is that it pays to read your emails!
The 101domain Corporate Brand Services team is fully versed in UDRP disputes and has a highly successful track record of getting names transferred back to our clients. Speak with an expert today +1.888.982.7940