drugstore.com, inc. v. Domain Management SPM
Claim Number: FA0908001279180
Complainant is drugstore.com,
inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <b3eauty.com>, <b4eauty.com>, <bdeauty.com>, <be3auty.com>, <be4auty.com>, <beau5ty.com>, <beau6ty.com>, <beau7ty.com>, <beau8ty.com>, <beaugty.com>, <beaujty.com>, <beaut5y.com>, <beaut6y.com>, <beaut7y.com>, <beauyty.com>, <bedauty.com>, <beqauty.com>, <berauty.com>, <bewauty.com>, <bgeauty.com>, <bheauty.com>, <bneauty.com>, <breauty.com>, <bveauty.com>, <bweauty.com>, and <ebauty.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 11, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 12, 2009.
On August 12, 2009, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <b3eauty.com>, <b4eauty.com>, <bdeauty.com>, <be3auty.com>, <be4auty.com>, <beau5ty.com>, <beau6ty.com>, <beau7ty.com>, <beau8ty.com>, <beaugty.com>, <beaujty.com>, <beaut5y.com>, <beaut6y.com>, <beaut7y.com>, <beauyty.com>, <bedauty.com>, <beqauty.com>, <berauty.com>, <bewauty.com>, <bgeauty.com>, <bheauty.com>, <bneauty.com>, <breauty.com>, <bveauty.com>, <bweauty.com>, and <ebauty.com> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 7, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@b3eauty.com, postmaster@b4eauty.com, postmaster@bdeauty.com, postmaster@be3auty.com, postmaster@be4auty.com, postmaster@beau5ty.com, postmaster@beau6ty.com, postmaster@beau7ty.com, postmaster@beau8ty.com, postmaster@beaugty.com, postmaster@beaujty.com, postmaster@beaut5y.com, postmaster@beaut6y.com, postmaster@beaut7y.com, postmaster@beauyty.com, postmaster@bedauty.com, postmaster@beqauty.com, postmaster@berauty.com, postmaster@bewauty.com, postmaster@bgeauty.com, postmaster@bheauty.com, postmaster@bneauty.com, postmaster@breauty.com, postmaster@bveauty.com, postmaster@bweauty.com, and postmaster@ebauty.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 14, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <b3eauty.com>, <b4eauty.com>, <bdeauty.com>, <be3auty.com>, <be4auty.com>, <beau5ty.com>, <beau6ty.com>, <beau7ty.com>, <beau8ty.com>, <beaugty.com>, <beaujty.com>, <beaut5y.com>, <beaut6y.com>, <beaut7y.com>, <beauyty.com>, <bedauty.com>, <beqauty.com>, <berauty.com>, <bewauty.com>, <bgeauty.com>, <bheauty.com>, <bneauty.com>, <breauty.com>, <bveauty.com>, <bweauty.com>, and <ebauty.com> domain names are confusingly similar to Complainant’s BEAUTY.COM mark.
2. Respondent does not have any rights or legitimate interests in the <b3eauty.com>, <b4eauty.com>, <bdeauty.com>, <be3auty.com>, <be4auty.com>, <beau5ty.com>, <beau6ty.com>, <beau7ty.com>, <beau8ty.com>, <beaugty.com>, <beaujty.com>, <beaut5y.com>, <beaut6y.com>, <beaut7y.com>, <beauyty.com>, <bedauty.com>, <beqauty.com>, <berauty.com>, <bewauty.com>, <bgeauty.com>, <bheauty.com>, <bneauty.com>, <breauty.com>, <bveauty.com>, <bweauty.com>, and <ebauty.com> domain names.
3. Respondent registered and used the <b3eauty.com>, <b4eauty.com>, <bdeauty.com>, <be3auty.com>, <be4auty.com>, <beau5ty.com>, <beau6ty.com>, <beau7ty.com>, <beau8ty.com>, <beaugty.com>, <beaujty.com>, <beaut5y.com>, <beaut6y.com>, <beaut7y.com>, <beauyty.com>, <bedauty.com>, <beqauty.com>, <berauty.com>, <bewauty.com>, <bgeauty.com>, <bheauty.com>, <bneauty.com>, <breauty.com>, <bveauty.com>, <bweauty.com>, and <ebauty.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Beauty.com, Inc., is an online destination for prestige beauty products, including more than 200 brands of widely recognized or niche products. Complainant launched its website at the <beauty.com> domain name in August of 1997, and has used its BEAUTY.COM mark continuously in commerce since November of 1999. Complainant has registered its BEAUTY.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,178,835 issued December 5, 2006, filed August 6, 1999).
Respondent, Domain Management SPM, registered the disputed <b3eauty.com>, <b4eauty.com>, <bdeauty.com>,
<be3auty.com>, <be4auty.com>, <beau5ty.com>,
<beau6ty.com>, <beau7ty.com>, <beau8ty.com>,
<beaugty.com>, <beaujty.com>, <beaut5y.com>,
<beaut6y.com>, <beaut7y.com>, <beauyty.com>,
<bedauty.com>, <beqauty.com>, <berauty.com>,
<bewauty.com>, <bgeauty.com>, <bheauty.com>,
<bneauty.com>, <breauty.com>, <bveauty.com>,
<bweauty.com>, and <ebauty.com> domain names
no earlier than May 5, 2006. All of the
disputed domain names, with the exception of the <ebauty.com> domain name, resolve to Complainant’s
website at the <beauty.com> domain name in violation of Respondent’s
affiliate agreement with Complainant.
The <ebauty.com>
domain name does not resolve to an active website.
Respondent has been
the respondent in another UDRP proceeding wherein the disputed domain names
were transferred from Respondent to the respective complainant in that
cases. See Gaiam, Inc. v. Domain
Mgmt. SPM, FA 1237207 (Nat. Arb.
Forum Jan. 19, 2009).
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has demonstrated its registration of the
BEAUTY.COM mark with the USPTO (Reg. No. 3,178,835 issued December 5, 2006,
filed August 6, 1999). The Panel finds
that Complainant therefore has rights in the BEAUTY.COM mark under Policy ¶ 4(a)(i). The Panel also
finds that the relevant date of rights in the mark for the purposes of Policy ¶
4(a)(i) is not the first date of use of the mark in
this instance, as Complainant alleges, but rather the registered mark’s filing
date of August 6, 1999. See AOL
LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding
that where the complainant had submitted evidence of its registration with the
USPTO, “such evidence establishes complainant’s rights in the mark pursuant to
Policy ¶ 4(a)(i).”); see also Planetary Soc’y v. Rosillo,
D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of
Complainant’s trademark rights date back to the application’s filing date); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8,
2007) (finding that the complainant’s rights in the KISSES trademark through
registration of the mark with the USPTO
“date back to the filing date of the trademark application and predate [the]
respondent’s registration”).
Respondent’s <b3eauty.com>,
<b4eauty.com>, <bdeauty.com>, <be3auty.com>,
<be4auty.com>, <beau5ty.com>, <beau6ty.com>,
<beau7ty.com>, <beau8ty.com>, <beaugty.com>,
<beaujty.com>, <beaut5y.com>, <beaut6y.com>,
<beaut7y.com>, <beauyty.com>, <bedauty.com>,
<beqauty.com>, <berauty.com>, <bewauty.com>,
<bgeauty.com>, <bheauty.com>, <bneauty.com>,
<breauty.com>, <bveauty.com>, <bweauty.com>,
and <ebauty.com> domain names contain Complainant’s
BEAUTY.COM mark while adding a single superfluous letter or number in the mark
or deleting a letter from the mark. Such
additions are routinely found to be without merit in a Policy ¶ 4(a)(i) analysis. See, e.g., Marriott
Int'l, Inc. v. Seocho, FA 149187 (Nat.
Arb. Forum Apr. 28, 2003) (finding that the respondent's
<marrriott.com> domain name was confusingly similar to the complainant's
MARRIOTT mark); see also Granarolo S.p.A. v. Dinoia, FA 649854
(Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain
name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also Am. Online, Inc. v. garybush co
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and
legitimate interests in the disputed domain names. The Panel finds that Complainant must set
forth a sufficient prima facie case
supporting this assertion, before Respondent receives the burden of proving its
rights or legitimate interests in the disputed domain names. The Panel finds Complainant has set forth a
sufficient prima facie case in this
instance, and now the burden of proving otherwise lies with Respondent. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii) before the burden
shifts to the respondent to show that it does have rights or legitimate
interests in a domain name); see also Swedish
Match UK Ltd. v. Admin, Domain,
FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima
facie case has been established by the complainant under Policy ¶ 4(c), the
burden then shifts to the respondent to demonstrate its rights or legitimate
interests in the disputed domain name).
The Panel has no evidence before it that demonstrates Respondent is or ever was commonly known by the disputed domain names. The WHOIS information lists Respondent as “Domain Management SPM,” and Complainant contends that Respondent does not have the authorization necessary to use Complainant’s BEAUTY.COM mark in any fashion. The Panel therefore finds that Respondent lacks rights and legitimate interests in the disputed domain names, as Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant has asserted that Respondent is an affiliate of
Complainant, and submits a registration agreement indicating that affiliates of
Complainant are not permitted to utilize Complainant’s mark in any domain
name. However, the attached affiliate
agreement does not demonstrate that Respondent has actually joined this
program, as the agreement appears to be a standard template agreement without
any evidence of assent by Respondent.
Nevertheless, there is no response from Respondent or other evidence
within the record demonstrating that Respondent is not participating in this
program. Therefore, since the record
does not clearly counter Complainant’s argument, the Panel is permitted to
accept Complainant’s allegation as true given Respondent’s failure to respond
to the Complaint. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21,
2000) (finding that failing to respond allows a presumption that the
complainant’s allegations are true unless clearly contradicted by the
evidence). Based on Complainant’s
attached screenshots, all of the disputed domain names, with the exception of
the <ebauty.com> domain
name, resolve to Complainant’s website at the <beauty.com> domain
name. Complainant argues that Respondent
receives improper referral fees through this violation of the affiliate
agreement. The Panel finds that
Respondent’s violation of the affiliate agreement with respect to these
disputed domain names is sufficient evidence in itself that Respondent has not
created a bona fide offering of goods or services or a
noncommercial use of the domain name pursuant
to Policy ¶¶ 4(c)(i) and (iii), respectively.
See Sports
Complainant contends that some of the disputed domain names
resolve to websites that display Complainant’s mark as well as content and
keywords related to Complainant’s business.
While Complainant fails to specify which disputed domain names have such
a use, the record does include screenshots of the disputed domain names’
resolving points. As mentioned
previously, the only disputed domain name that appears to not resolve to
Complainant’s website is the <ebauty.com> domain name. However, the attached
screenshot demonstrates that there is no resolving website, as the web page
submitted indicates that “beauty.com isn’t loading right now.” Thus, the Panel cannot determine whether the
source of the keywords occurred from a web page use by Respondent. What the evidence does indicate, as opposed
to Complainant’s contentions, is that this disputed domain name is not being
actively used. The Panel finds that
given the lack of any contrary evidence from Respondent, Respondent has failed
to make an active use of the disputed <ebauty.com> domain name,
which indicates a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See TMP
Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel
concludes that Respondent's [failure to make an active use] of the domain name
does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Am. Online, Inc. v. Kloszewski,
FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's [failure to make an
active use] of the <aolfact.com> domain name for over six months is
evidence that Respondent lacks rights and legitimate interests in the domain
name.”).
Respondent has registered all of
the instant domain names while adding or deleting a letter or number from
Complainant’s mark. This practice of
manipulating a mark in a domain name to capitalize on an Internet user’s common
typographical errors is called “typosquatting,” and serves as evidence alone of
a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). The Panel finds that Respondent has engaged
in typosquatting in connection with all of the disputed domain names, and has
thus demonstrated a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain
Registration
The Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been
the respondent in other UDRP proceedings wherein the disputed domain names were
transferred from Respondent to the respective complainants in those cases. See
Gaiam, Inc. v. Domain Mgmt.
SPM, FA 1237207 (Nat. Arb. Forum
Jan. 19, 2009). The Panel finds this to
be sufficient evidence, given Respondent’s registration of twenty-six domain
names in the instant case, that Respondent has engaged in bad faith registration
and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v.
Respondent has been found to have violated Complainant’s
affiliate program agreement with regards to the <b3eauty.com>, <b4eauty.com>, <bdeauty.com>,
<be3auty.com>, <be4auty.com>, <beau5ty.com>,
<beau6ty.com>, <beau7ty.com>, <beau8ty.com>,
<beaugty.com>, <beaujty.com>, <beaut5y.com>,
<beaut6y.com>, <beaut7y.com>, <beauyty.com>,
<bedauty.com>, <beqauty.com>, <berauty.com>,
<bewauty.com>, <bgeauty.com>, <bheauty.com>,
<bneauty.com>, <breauty.com>, <bveauty.com>,
<bweauty.com> domain names, as they each resolve to Complainant’s
website. Respondent is thus commercially
gaining through the receipt of referral fees in violation of the agreement by
creating a likelihood of confusion as to Complainant’s sponsorship of these
disputed domain names. This evidences
Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Deluxe Corp. v.
The Panel has also found that Respondent’s <ebauty.com> domain name does not resolve to an active website, based on Complainant’s attached record. The Panel finds that the failure to make an active use of the disputed domain name indicates that Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, the Panel notes that Respondent’s disputed domain
names, each registered no earlier than May 6, 2006, constitute
typosquatting. Respondent therefore has demonstrated further evidence of an
engagement in bad faith registration and use under Policy ¶ 4(a)(iii). See Dermalogica,
Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com>
domain name was a “simple misspelling” of the complainant's DERMALOGICA
mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶
(a)(iii)); see also Zone Labs, Inc.
v. Zuccarini, FA 190613 (Nat. Arb.
Forum Oct. 15, 2003) (“Respondent’s registration and use of [the
<zonelarm.com> domain name] that capitalizes on the typographical error
of an Internet user is considered typosquatting. Typosquatting, itself is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <b3eauty.com>, <b4eauty.com>, <bdeauty.com>, <be3auty.com>, <be4auty.com>, <beau5ty.com>, <beau6ty.com>, <beau7ty.com>, <beau8ty.com>, <beaugty.com>, <beaujty.com>, <beaut5y.com>, <beaut6y.com>, <beaut7y.com>, <beauyty.com>, <bedauty.com>, <beqauty.com>, <berauty.com>, <bewauty.com>, <bgeauty.com>, <bheauty.com>, <bneauty.com>, <breauty.com>, <bveauty.com>, <bweauty.com>, and <ebauty.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 28, 2009
National
Arbitration Forum
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