Bare Escentuals Beauty, Inc. v. Admin / Conquistador Sat
Claim Number: FA1408001576288
Complainant is Bare Escentuals Beauty, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Admin / Conquistador Sat (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bareescentuales.com>, registered with Fabulous.com Pty Ltd.
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.
Hon. Karl V. Fink (Ret.) 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 <bareescentuales.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. 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 September 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 22, 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@bareescentuales.com. Also on September 2, 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 25, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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 name be transferred from Respondent to Complainant.
Complainant
Complainant owns the BARE ESCENTUALS mark through United States Patent and Trademark Office ("USPTO") registrations (e.g., Reg. No. 1,539,966 registered May 23, 1989). Complainant uses the BARE ESCENTUALS mark in connection with cosmetics, and body care products. The <bareescentuales.com> domain name is confusingly similar to the BARE ESCENTUALS mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not affiliated with Complainant. The available evidence shows Respondent is not commonly known by the <bareescentuales.com> name. Respondent’s use demonstrates a lack of rights as the domain name resolves to a website with links to third-party websites, some of which compete with Complainant in the cosmetics industry.
Respondent has a history of bad faith as seen through prior adverse UDRP decisions, which reveals Respondent has engaged in a pattern of such behavior. By resolving the disputed domain name to feature links to competitors of Complainant, Respondent has disrupted Complainant’s business. Further, Respondent likely generates click-through revenue from these links, which implicates Policy ¶ 4(b)(iv) given the misleading nature of the domain name and cosmetic-related content of the landing page. Finally, the <bareescentuales.com> domain name is a typosquat on the BARE ESCENTUALS mark.
Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 BARE ESCENTUALS mark in connection with cosmetics, and body care products. Complainant claims rights in the BARE ESCENTUALS mark through United States Patent and Trademark Office ("USPTO") registrations (e.g., Reg. No. 1,539,966 registered May 23, 1989). The Panel finds Complainant’s USPTO registrations sufficient to establish rights in the BARE ESCENTUALS mark for purposes of Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues the <bareescentuales.com> domain name is confusingly similar to the BARE ESCENTUALS mark. The domain name adds a single letter “e” between the “l” and “s” of ESCENTUALS. The domain name further adds the generic top-level domain (“gTLD”) “.com,” and omits the space between the two-word mark. Prior panels have concluded that the addition of a gTLD and omission of spacing are irrelevant to the confusing similarity analysis under Policy ¶ 4(a)(i), and that a minor spelling deviation, such as a single added letter, fails to differentiate a domain name from the incorporated mark. In The Gap, Inc. v. Shu Lin Co c/o shu Lin, FA 1332804 (Nat. Arb. Forum July 27, 2010), the panel found the <oldhavy.com> domain confusingly similar to the OLD NAVY mark despite the misspelling of the mark, the omission of spacing, and addition of a gTLD. The Panel finds the <bareescentuales.com> domain name is confusingly similar to the BARE ESCENTUALS mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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 claims Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent is not affiliated with Complainant. Complainant further claims the available evidence shows Respondent is not commonly known by the <bareescentuales.com> name. The WHOIS record identifies “Admin / Conquistador Sat” as registrant, and Respondent has failed to supplement the record with a response. Accordingly, in light of the available evidence, the Panel finds that Respondent is not commonly known by the <bareescentuales.com> name 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).
Complainant argues that Respondent’s use demonstrates a lack of rights as the domain name resolves to a website with links to third-party websites, some of which compete with Complainant in the cosmetics industry. The domain name resolves to promote links including “Ben Nye Makeup Website,” “Maybelline Official Site,” and “Target Up & Up.” The Panel finds that Respondent’s use of the <bareescentuales.com> domain name to feature links to competing cosmetics brands does not amount to a use afforded the protections of Policy ¶¶ 4(c)(i) or (iii). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not 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)).
Complainant has proven this element.
Complainant argues Respondent has a history of bad faith as seen through prior adverse UDRP decisions, which reveals Respondent has engaged in a pattern of such behavior. To demonstrate this pattern, Complainant has included several UDRP decisions against Respondent in its exhibits (e.g., The Gap Inc., v. Conquistador Sat, FA 1523922 (Nat. Arb. Forum Nov. 18, 2013)). Prior panels have relied on prior findings of bad faith to inform bad faith considerations in a present case. Notably, in Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006), the panel found bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants. Here, the Panel agrees that Respondent has engaged in a pattern of bad faith, and therefore finds evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(ii).
Complainant argues that Respondent has disrupted Complainant’s business by resolving the disputed domain name to feature links to competitors of Complainant. The disputed domain name resolves to a website featuring links such as “Ben Nye Makeup Website,” “Maybelline Official Site,” and “Target Up & Up,” which offer competing make-up and cosmetic products. The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iii) as Respondent has used the domain name to promote links in competition with Complainant. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“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).”).
Complainant claims Respondent likely generates click-through revenue from these featured links, which implicates Policy ¶ 4(b)(iv) bad faith given the misleading nature of the domain name and cosmetic-related content of the landing page. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel wrote, “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.’” The Panel finds that the use of competing links to generate click-through revenue is indicative of Policy ¶ 4(b)(iv) bad faith.
Complainant argues the <bareescentuales.com> domain name is a typosquat on the BARE ESCENTUALS mark. In Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003), the panel explained that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain.” Further, past panels have recognized typosquatting as evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). In the present case, the domain name <bareescentuales.com> differs from the BARE ESCENTUALS mark by the addition of a single letter “e” between the “l” and “s” of ESCENTUALS. The Panel agrees that Respondent’s conduct amounts to typosquatting, the Panel finds this is evidence of Policy ¶ 4(a)(iii) bad faith.
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <bareescentuales.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 29, 2014
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