Bare Escentuals Beauty, Inc. v. Domain Proxy Manager / Domains By Proxy - Niche Proxy Account
Claim Number: FA1408001576283
Complainant is Bare Escentuals Beauty, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Proxy Manager / Domains By Proxy - Niche Proxy Account (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bareescenyuals.com> and <bareminearals.com>, registered with Fabulous.com Pty Ltd.
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 21, 2014; the National Arbitration Forum received payment on August 21, 2014.
On August 24, 2014, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <bareescenyuals.com> and <bareminearals.com> domain names are registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 August 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bareescenyuals.com, postmaster@bareminearals.com. Also on August 25, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 19, 2014, 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" 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 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. Complaint:
1. Policy ¶ 4(a)(i). Complainant uses the BAREMINERALS and BARE ESCENTUALS marks for cosmetics, skincare, and related products. Complainant owns the BAREMINERALS mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,321,607, registered February 22, 2000). Complainant also owns the BARE ESCENTUALS mark via USPTO registrations (e.g., Reg. No. 1,539,966, registered May 28, 1989). The <bareescenyuals.com> domain name is confusingly similar to the BARE ESCENTUALS mark and the <bareminearals.com> domain name is confusingly similar to the BAREMINERALS mark.
2. Policy ¶ 4(a)(ii). Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names. Complainant has not authorized Respondent’s use of the BAREMINERALS or BARE ESCENTUALS mark. The disputed domain names resolves to a website featuring links to third-party websites, some of which compete with Complainant in the cosmetics field. Such use does not amount to a bona fide offering of goods or services, or a legitimate and noncommercial fair use.
3. Policy ¶ 4(a)(iii). Respondent is in violation of Policy ¶ 4(b)(iii) as the disputed domain names resolve to promote links, some of which compete with Complainant. Further, Respondent’s use of the disputed domain names in connection with click-through hyperlink pages from which it attempts to generate income under the guise of Complainant’s affiliation evinces Policy ¶ 4(b)(iv) bad faith. Finally, Respondent’s typosquatting behavior is further evidence of bad faith.
B. Response:
1. Respondent failed to submit a response in this matter.
1. Respondent’s <bareescenyuals.com> and <bareminearals.com> are confusingly similar to Complainant’s BAREMINERALS and BARE ESCENTUALS marks.
2. Respondent does not have any rights or legitimate interests in the <bareescenyuals.com> and <bareminearals.com> domain names.
3. Respondent registered or used the <bareescenyuals.com> and <bareminearals.com> domain names 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(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.”).
Complainant uses the BAREMINERALS and BARE ESCENTUALS marks for cosmetics, skincare, and related products. Complainant claims to own the BAREMINERALS mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No 2,321,607, registered February 22, 2000). Complainant also claims rights in the BARE ESCENTUALS mark via USPTO registrations (e.g., Reg. No. 1,539,966, registered May 28, 1989). The Panel agrees that Complainant’s registrations of the BAREMINERALS and BARE ESCENTUALS marks with the USPTO suffice to demonstrates rights in the respective marks pursuant to Policy ¶ 4(a)(i) even if the respondent resides in another jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant argues the <bareescenyuals.com> domain name is confusingly similar to the BARE ESCENTUALS mark. The Panel sees that the domain name differs from the mark by the substitution of the “t” with a “y” in ESCENTUALS, the addition of a generic top-level domain (“gTLD”), and the elimination of spacing. Such alterations have been found insufficient to distinguish the domain name from the incorporated mark. See, e.g., Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain). Accordingly, the Panel finds the <bareescenyuals.com> domain name confusingly similar to the BARE ESCENTUALS mark pursuant to Policy ¶ 4(a)(i).
Complainant also argues the <bareminearals.com> domain name is confusingly similar to the BAREMINERALS mark. This name differs from the mark by the inclusion of an extra “a” between the “e” and “r” in MINERALS, the affixation of a gTLD, and the omission of spacing. As above, the Panel agrees that such alterations fail to negate confusing similarity. Notably, in Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001), the panel found the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e.” Further, in Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel found that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). In line with such decisions, the Panel finds that the <bareminearals.com> domain name is confusingly similar to the BAREMINERALS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. Complainant urges that Respondent is not commonly known by the disputed domain names. Further, Complainant claims it has not authorized Respondent’s use of either mark. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) the panel concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. In light of Respondent’s failure to submit a response arguing the alternative, the Panel agrees that the record does not support a finding that Respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant avers that the disputed domain names resolve to a websites featuring links to third-party websites, some of which compete with Complainant in the cosmetics field. See Compl., at Attached Ex. H. Complainant claims that such use does not amount to a bona fide offering of goods or services, or a legitimate and noncommercial fair use. Previous panels agree. The Panel notes that the landing pages promote cosmetic-related links including, “Tarte Makeup,” “L’Oreal Excellence Crème,” and “Collagen Skincare.” See id. The Panel agrees that this use of the disputed domain names to promote links in competition with Complainant does not amount to a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant also claims that Respondent’s use of the disputed page to promote links in competition with Complainant serves to disrupt Complainant’s own cosmetic offerings, and is therefore evidence of bad faith. The Panel recalls that the disputed domain name resolves to a page featuring links such as “Tarte Makeup,” “L’Oreal Excellence Crème,” and “Collagen Skincare.” See Compl., at Attached Ex. H. In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) the panel wrote, “Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).” Here, the Panel agrees that the promotion of competing links is evidence of bad faith disruption pursuant to Policy ¶ 4(b)(iii).
Next, Complainant contends that Respondent is using the disputed domain names in connection with a click-through website featuring competing cosmetic products, which demonstrates that Respondent is attempting to mislead consumers for Respondent’s own profit. See Compl., at Attached Ex. H. The Panel agrees that such use evinces Policy ¶ 4(b)(iv) bad faith. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant argues that Respondent’s typosquatting behavior further demonstrates bad faith. The Panel recalls that the <bareescenyuals.com> and <bareminearals.com> disputed domain names differs from the BARE ESCENTUALS and BARE MINERALS marks, respectively, by a single letter. If the Panel agrees that Respondent has engaged in typosquatting, the Panel finds bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See 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).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bareescenyuals.com> and <bareminearals.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 1, 2014
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