BHCosmetics, Inc. v. Zhichao Yang
Claim Number: FA1502001604344
Complainant is BHCosmetics, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bhcomsetics.com>, <bhcosemtics.com>, <bhcosmeics.com>, <bhcosmentics.com>, <bhcosmitics.com>, <bhcosnetics.com>, and <hcosmetics.com>, registered with GODADDY.COM, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 10, 2015; the Forum received payment on February 10, 2015.
On February 12, 2015, GODADDY.COM, LLC confirmed by e-mail to the Forum that the <bhcomsetics.com>, <bhcosemtics.com>, <bhcosmeics.com>, <bhcosmentics.com>, <bhcosmitics.com>, <bhcosnetics.com>, and <hcosmetics.com> domain names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, 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 February 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2015 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@bhcomsetics.com, postmaster@bhcosemtics.com, postmaster@bhcosmeics.com, postmaster@bhcosmentics.com, postmaster@bhcosmitics.com, postmaster@bhcosnetics.com, postmaster@hcosmetics.com. Also on February 12, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complaint has rights in the BHCOSMETICS marks and has registered such marks as trademarks with the USPTO. The BHCOSMETICS marks are used for various consumer beauty products and for online retailing of such products. The Marks have been used continuously in interstate commerce since at least December 1, 2009 and have not been abandoned, cancelled or revoked. Complainant BHCosmetics, Inc. owns the exclusive right to use the marks in connection with online retail store for beauty products.
Respondent’s domain names are nearly identical and confusingly similar to Complainant’s marks. The domain names differ from Complainant’s mark only by a single character or because of different juxtaposition of two characters as compared to Complainant’s marks. When compared to Complainant’s marks, the domain names contain 1) the addition of one extra character; or 2) the removal of one character: or 3) one character which is incorrect; or 4) two juxtaposition characters.
The domain names are examples of “typosquatting.”
Respondent has no rights or legitimate interests in respect of the disputed domain names because Respondent is not commonly known by any of the domain names and because Complainant has not authorized Respondent to use its trademark in any capacity. Respondent has also not responded to a “cease and desist” letter from Complainant informing Respondent that it had no rights in the domain names. Respondent’s use of the domain names are neither bona fide offerings of goods or services nor a legitimate noncommercial or fair use of the domain names.
The earliest use of the domain names was after Complainant acquired rights in its relevant trademarks.
The domain names were registered and used in bad faith. The domain names are used to generate click-through revenue by use of Complainant’s trademark. Additionally, pay-per-click links on webpages addressed by the domain names reference Complainant’s competitors. Respondent is a recalcitrant, serial cybersquatter / typosquatted having lost multiple domain name disputes. Respondent’s typosquatting is in itself evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the BHCOSMETICS mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its relevant trademarks.
Respondent is a serial cybersquatter and typosquatter who had suffered numerous adverse UDRP decisions.
Respondent uses the at-issue domain names to address varied pay-per-click webpages which display third party links some of which compete with Complainant.
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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for the BHCOSMETICS trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The <bhcomsetics.com>, <bhcosemtics.com>, <bhcosmeics.com>, <bhcosmentics.com>, <bhcosmitics.com>, <bhcosnetics.com>, and <hcosmetics.com> domain names differ from Complainant’s trademark by a single added, deleted, or substituted character; or by a transposition of characters -all have the generic top-level domain “.com” appended to their BHCOSMETICS inspired second level domain name. Respondent’s trivial typographic modifications to Complainant’s trademark in forming the at-issue domain names fail to distinguish any of the domain names from Complainant’s BHCOSMETICS trademark as each domain name nonetheless unabashedly incorporates the essence of Complainant’s trademark. Further, the inclusion of the top-level domain name “.com” is inconsequential to Policy ¶4(a)(i) analysis. Therefore, the Panel concludes that the at-issue domain names are each confusingly similar to Complainant’s BHCOSMETICS trademark. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name <0xygen.com>, with zero in place of letter “O,” “appears calculated to trade on Complainant’s name by exploiting likely mistake by users when entering the url address”); see also, Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of each at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at-issue domain names.
WHOIS information for the at-issue domain names lists “Zhichao Yang” as the domain names’ registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the any of the confusingly similar domain names. Therefore, the Panel finds that Respondent is not commonly known by any of the at-issue domain names pursuant to Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent uses the domain names to address webpages displaying pay-per-click links which include links to Complainant’s competitors. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent's use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com>, domain names to redirect Internet users to a website featuring advertisements and links to Complainant's competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain names.
The domain names were each registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent’s multiple adverse prior UDRP decisions indicates a malignant pattern of bad faith under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (stating “These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”); see also, Fair Isaac Corporation v. Zhichao Yang, FA 1582275 (Nat. Arb. Forum June 28, 2014) (decided against Respondent on similar facts). Respondent’s pattern of cybersquatting suggests Respondent’s bad faith in the instant case.
Second and as mentioned above, Respondent uses the at-issue domain names to promote links to merchandise in competition with Complainant’s product offering. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (stating: “Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”)
Third, the competing links discussed above are pay-per-click links designed to produce revenue for Respondent. Respondent thus intends to generate revenue by using the confusingly similar domain names to misguide Internet users to its own webpages. These circumstances demonstrate Respondent’s bad faith as to each of the domain names under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also, Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Fourth, Respondent’s domain names exemplify typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that Internet users will inadvertently type the malformed string when searching for products or services associated with the targeted trademark. In doing so these imprecise typing Internet users are directed to a web presence controlled by the domain name’s registrant. Here Respondent simply adds a character, deletes a character or exchanges characters in Complainant’s trademark to form each of the typosquatted domain names. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent registered the <bhcomsetics.com>, <bhcosemtics.com>, <bhcosmeics.com>, <bhcosmentics.com>, <bhcosmitics.com>, <bhcosnetics.com>, and <hcosmetics.com> domain names knowing that Complainant had trademark rights in BHCOSMETICS. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of such trademark on webpages addressed by the at-issue domain names. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain names precisely to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bhcomsetics.com>, <bhcosemtics.com>, <bhcosmeics.com>, <bhcosmentics.com>, <bhcosmitics.com>, <bhcosnetics.com>, and <hcosmetics.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 15, 2015
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