TheUBeauty.com, LLC v. FE RUI
Claim Number: FA2112001978270
Complainant is TheUBeauty.com, LLC ("Complainant"), represented by Scott M. Hervey of Weintraub Tobin Chediak Coleman Grodin, California, USA. Respondent is FE RUI ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubeautydiary.com>, registered with NameSilo, LLC.
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.
Complainant submitted a Complaint to the Forum electronically on December 23, 2021; the Forum received payment on December 23, 2021.
On December 26, 2021, NameSilo, LLC confirmed by email to the Forum that the <ubeautydiary.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 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@ubeautydiary.com. Also on December 29, 2021, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 21, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a manufacturer of skin care products sold in retail shops and online. Complainant’s direct-to-consumer sales totaled approximately $4 million in 2020 and $7 million in 2021. Complainant’s products are also sold through retail partners in the United States, United Kingdom, and many other countries. Complainant has used the U BEAUTY mark in connection with its products since 2019, and claims that it has become a well-known brand in the skincare and beauty industry worldwide. Complainant owns trademark registrations for U BEAUTY in standard character form in the United States, the United Kingdom, the Philippines, Singapore, and elsewhere, and for a U BEAUTY design mark in Hong Kong, Taiwan, and other jurisdictions.
Respondent registered the disputed domain name <ubeautydiary.com> via a privacy registration service in June 2021. The domain name is being used for a website offering goods that compete directly with those sold by Complainant. Complainant alleges that Respondent is trying to pass itself off as being associated with Complainant. Complainant lists numerous emails that it has received from customers of Respondent stating that they had believed they were ordering from Complainant and complaining that they did not receive their orders.
Complainant contends on the above grounds that the disputed domain name <ubeautydiary.com> is confusingly similar to its UBEAUTY 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 failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <ubeautydiary.com> incorporates Complainant's registered UBEAUTY trademark, adding the generic term "diary" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Eli Lilly & Co. v. Igor Palchikov, FA 1388612 (Forum June 15, 2011) (finding <cialisdiary.com> confusingly similar to CIALIS). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
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. It was registered through a privacy registration service, presumably for the purpose of concealing Respondent’s identity, and Respondent’s website provides only an address in the United Kingdom that appears to correspond to a mail forwarding service. The website promotes goods that compete with those sold by Complainant. The evidence before the Panel indicates that orders are being accepted through this website, but that in at least some instances they are not being fulfilled, and that customers are being misled into believing that the website is associated with Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Tyco Fire & Security GmbH v. Jean-Claude Van-ess / Van-Ess Dev. Inc, FA 1930767 (Forum Mar. 3, 2021) (finding lack of rights or interests arising from website passing off as complainant in attempt to defraud consumers into paying for nonexistent services); Hy-Tape Internatonal, Inc. v. SuXiuZhu / ShenZhenShiHuaYanJiaoNianZhiPinYouXianGongSi, FA 1931559 (Forum Mar. 23, 2021) (finding lack of rights or interests arising from website promoting directly competing products); Dell Inc. v. Samrat Singha, FA 1853309 (Forum Aug. 26, 2019) (finding lack of rights or interests where domain name registered via privacy registration service was used for website promoting directly competing services and soliciting personal information from Internet users).
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.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, 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."
Respondent used a privacy registration service to register a domain name incorporating Complainant’s registered mark. Respondent is using the domain name for a misleading website that promotes directly competing products, creating confusion among consumers and in at least some instances failing to fulfill orders placed through the site. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Tyco Fire & Security GmbH v. Jean-Claude Van-ess / Van-Ess Dev. Inc, supra (finding bad faith where domain name was used to pass off as complainant in attempt to defraud consumers into paying for nonexistent services); Hy-Tape Internatonal, Inc. v. SuXiuZhu / ShenZhenShiHuaYanJiaoNianZhiPinYouXianGongSi, supra (finding bad faith where domain name was used to promote directly competing products); Dell Inc. v. Samrat Singha, supra (finding bad faith where domain name was used to pass off as complainant, promoting directly competing services and soliciting personal information from Internet users). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubeautydiary.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: January 24, 2022
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