BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop
Claim Number: FA1506001626334
Complainant is BGK Trademark Holdings, LLC and Beyoncé Giselle Knowles-Carter (“Complainant”), represented by Brad D Rose of Pryor Cashman LLP, New York, USA. Respondent is Chanphut / Beyonce Shop (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <beyonceshop.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 26, 2015; the Forum received payment on June 29, 2015.
On June 28, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <beyonceshop.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 July 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 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@beyonceshop.com. Also on July 2, 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 July 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
a. Trademark/Service Mark Information:
i. Complainants are the owners of U.S. Trademark Reg. No. 2,879,852, Reg. No. 3,734,682 and Reg. No. 4,125,777 for the BEYONCÉ mark for use in connection with a variety of goods and services, including, but not limited to, Class 3 fragrances and perfumery, Class 9 handheld and mobile digital electronic devices and cases and covers for mobile phones and mobile digital electronic devices, Class 16 photographs, posters and stickers, Class 25 clothing and Class 41 entertainment services in the nature of live performances by a female entertainer (the “BEYONCÉ mark”). U.S. Trademark Reg. No. 2,879,852 is an incontestable trademark registration.
ii. Complainants also own U.S. trademark registrations for the marks BEYONCÉ HEAT, BEYONCÉ HEAT RUSH, BEYONCÉ MIDNIGHT HEAT, BEYONCÉ HEAT WILD ORCHID and BEYONCÉ PULSE for use in connection with Class 3 perfumes, lotions and related goods (U.S. Reg. Nos. 3,955,340; 4,045,913; 4,296,217; 4,708,898; and 4,432,864). Complainants also own several foreign trademark registrations for the marks BEYONCÉ, BEYONCÉ HEAT, BEYONCÉ HEAT DREAM, BEYONCÉ HEAT RUSH, BEYONCÉ MIDNIGHT HEAT, BEYONCÉ PULSE, BEYONCÉ PULSE BEAT, BEYONCÉ RISE, and BEYONCÉ RISE WILD ORCHID.
iii. Complainants have used the BEYONCÉ mark in commerce since at least as early as 2003.
FACTUAL GROUNDS
This Amended Complaint is based on the following factual grounds:
A. Beyoncé is One of the Most Successful Artists of all Time
Complainant Beyoncé Giselle Knowles-Carter (“Beyoncé”) is an internationally renowned recording artist, performer, songwriter, actress and spokeperson. Beyoncé’s albums have been certified Multi-Platinum and she been recognized as one of the most successful female artists in history, and the most-nominated woman in Grammy Award® history.
Beyoncé became a household name in 1990 as part of the R&B group Destiny’s Child. In 2003, Beyoncé established herself as a solo artist worldwide with the release of her debut album, Dangerously in Love, which sold 11 million copies, earned five Grammy Awards® and featured the number-one singles Crazy in Love and Baby Boy. In 2006, Beyoncé released her second solo album, B’Day, which sold 541,000 copies in just the first week after its release and has been certified Triple Platinum. Her latest album, Beyoncé, was released digitally to the iTunes Store without prior announcement or promotion in 2013 and still debuted at number one on the Billboard charts. Beyoncé is the fastest selling album in iTunes history, selling 828,773 copies worldwide in its first three days of availability.
Over the course of her career, Beyoncé has sold over 118 million records as a solo artist worldwide and an additional 60 million as a member of Destiny’s Child. In 2009, Billboard named Beyoncé the Top Radio Songs Artist of the Decade, the Top Female Artist of the 2000s and in 2011, the magazine named her their Artist of the Millennium. In 2014, Time magazine ranked Beyoncé number one on its list of the “100 Most Influential People” and Forbes identified her as the “World’s Most Powerful Celebrity.”
Beyoncé has also earned many music industry awards and accolades, including Grammy Awards®, BET Awards, American Music Awards, Billboard Music Awards, MTV Music Awards, People’s Choice Awards, Teen Choice Awards, and World Music Awards, among others. Callahan Decl. at ¶8. To date, Beyoncé has received 53 Grammy nominations and has earned 20 Grammy Awards® including Best Female Pop Vocal Performance, Song of the Year and Best Female R&B Vocal Performance. In addition, she has received 8 awards and 24 nominations from the Billboard Awards and 6 awards and 18 nominations from the American Music Awards.
Beyoncé’s talent is not limited to music. She is also a celebrated actress and has held starring roles in a number of films, including Austin Powers in Goldmember, The Pink Panther, Obsessed, and Cadillac Records. Beyoncé was nominated for a Golden Globe in 2006 for her starring role in the film version of the Broadway musical Dreamgirls, and Beyoncé has also been nominated for two additional Golden Globes for Best Original Song in a Motion Picture for songs that were featured in Cadillac Records and Dreamgirls.
Beyoncé has garnered tremendous amounts of unsolicited publicity. Whatever Beyoncé does makes the news. Thousands of articles are published every year about Beyoncé. The articles cover everything from her personal and family life to her performances and status as a fashion icon. Hundreds of articles were published discussing Beyoncé’s performance at the 2014 MTV Video Music awards alone. For example, Time magazine published an article describing Beyoncé’s performance at the 2014 MTV Video Music Awards as a “mind-bogglingly perfect medley of tracks.” ABC News ranked that same medley as one of the “5 Most Talked About Moments” from that year’s Video Music Awards. Beyoncé has also been included on countless “Best Dressed” lists.
B. Co mplainants’ Distinctive BEYONCÉ Mark
Through her company BGK Trademark Holdings, LLC, Beyoncé owns several U.S. trademark registrations for the BEYONCÉ mark for a wide variety of goods and services, including, inter alia, entertainment services, clothing, and handheld and mobile digital electronic devices. see, e.g., U.S. Reg. Nos. 2,879,852; 3,734,682; and 4,125,777. Therefore, both BGK Trademark Holdings, LLC and Beyoncé have rights to the Disputed Domain Name. Beyoncé also owns several trademark registrations in foreign jurisdictions for a wide variety of goods and services, including, inter alia, cosmetics, clothing, paper goods, entertainment services and electronic devices. Through her dominance in the music, film, clothing, cosmetics and perfumery industries, including her sold-out musical performances and platinum-selling albums, her international public and media appearances, and the solicited and unsolicited publicity she has received, the BEYONCÉ mark has become internationally famous and a substantial commercial asset.
Complainants have further authorized and licensed the use of the BEYONCÉ mark in connection with a variety of goods and services, including clothing, perfumery and lotions. They market and promote goods and services bearing the BEYONCÉ mark online, including authorized clothing, perfumery and lotions. Id. Complainants also maintain an official website accessible via <beyonce.com> and consumers may purchase authorized clothing, accessories, music and fragrances bearing the BEYONCÉ mark online at <shop.beyonce.com>.
In addition, Beyoncé has worked as a spokeswoman for fashion, cosmetic and fragrance companies and has developed her own perfumes sold under the trademarks BEYONCÉ HEAT, BEYONCÉ HEAT RUSH, BEYONCÉ MIDNIGHT HEAT, BEYONCÉ HEAT WILD ORCHID and BEYONCÉ PULSE (for which Complainants also own U.S. trademark registrations, U.S. Reg. Nos. 3,955,340; 4,045,913; 4,296,217; 4,708,898; and 4,432,864). Beyoncé has sold tens of millions of fragrances under these trademarks. As a result of the substantial commercial success that the BEYONCÉ mark has enjoyed in the marketplace, and because of the extensive advertising and promotional efforts, as well as Beyoncé’s impressive and growing fan-base, the BEYONCÉ mark has developed substantial goodwill and serves to identify Complainants as the sole source of high quality goods and services.
To maintain the strength of its famous and distinctive brand, Complainants vigilantly protect the BEYONCÉ mark on a worldwide basis. For example, Complainants regularly send cease and desist letters to manufacturers, retailers and distributors of products bearing marks that infringe, are confusingly similar to or dilutive of the BEYONCÉ mark. Because of Complainants’ extraordinary efforts to promote, advertise and protect the BEYONCÉ mark and Complainants’ worldwide marketplace success, the BEYONCÉ mark serves as a strong identifier of Complainants as the sole source of the products and services bearing the mark.
C. Prior Transfer of the <beyoncefragrance.com> Domain Name to Complainants
Pursuant to its October 15, 2010 decision, Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431 (Oct. 15, 2010) (the “2010 WIPO Decision”), a WIPO Administrative Panel found that Complainant Beyoncé Knowles proved all of the necessary elements of the Uniform Domain Name Dispute Resolution Policy and transferred the domain <beyoncefragrance.com> to Complainant Beyoncé Knowles. Specifically, the Administrative Panel found that: (i) the <beyoncefragrance.com> domain name was identical or confusingly similar to a trademark or service mark in which Complainants have rights (i.e., finding that “the Domain Name clearly is dominated by Complainant’s BEYONCÉ mark and the source identifying and distinctive element of the Domain Name and Complainant’s mark are identical”); (ii) respondent had no rights or legitimate interests in the <beyoncefragrance.com> domain name; and (iii) respondent registered and was using the <beyoncefragrance.com> domain name in bad faith. 2010 WIPO Decision. Ultimately, the Administrative Panel ordered the transfer of the domain name <beyoncefragrance.com> to Complainants.
II. LEGAL GROUNDS
For the reasons outlined below, Respondent violates the Rules because (1) the Disputed Domain Name wholly incorporates a trademark in which Complainants have rights and, as such, is confusingly similar or identical to Complainants’ mark; (2) Respondent has no rights or legitimate interests with respect to the Disputed Domain Name; and (3) the Disputed Domain Name has been registered and is being used in bad faith.
Complainants Have Rights in the BEYONCÉ Mark
As found in the 2010 WIPO Decision, Complainants continue to enjoy protectable trademark rights in the BEYONCÉ mark throughout the world. In fact, those rights have significantly strengthened since the 2010 WIPO Decision. Complainants are the owners of U.S. Trademark Reg. Nos. 2,879,852; 3,734,682; and 4,125,777 for the BEYONCÉ mark for use in connection with a variety of goods and services, including, but not limited to, entertainment services, clothing, and handheld and mobile digital electronic devices. In addition, Complainants are owners of trademark registrations in foreign jurisdictions for a wide variety of goods and services, including, but not limited to, cosmetics, clothing, paper goods, entertainment services and electronic devices. Complainants have used the BEYONCÉ mark in connection with goods and services since at least as early as 2003, and the mark has become a household name.
In light of the foregoing, the Panel should find that the BEYONCÉ mark is a strong and protectable trademark belonging solely to Complainants. There is only one Beyoncé and that is Complainant.
The Disputed Domain Name is Identical Or Confusingly Similar to the BEYONCÉ Mark
The Panel should find that the Disputed Domain Name is identical, or at least confusingly similar to Complainants’ BEYONCÉ mark. Upon information and belief, seeking to capitalize on the fame of the BEYONCÉ mark and associated goodwill, and recognizing the importance of the Internet as a means of communication between Complainants and the public, Respondent registered the Disputed Domain Name <beyonceshop.com> without authorization. Respondent’s domain name (i) wholly incorporates the BEYONCÉ mark; (ii) is confusingly similar to Complainants’ BEYONCÉ mark; and (iii) is likely to cause confusion, mistake and/or deception among the consuming public. In the 2010 WIPO Decision, the Administrative Panel found that the <beyoncefragrance.com> domain name was identical or confusingly similar to Complainants’ BEYONCÉ mark. The same is true here.
A domain name predominantly consisting of a trademark owned by another does not create a new or different mark in which the Respondent has rights. See, e.g., Fireweb Geosynthetics Ltd. v. Belcanto Inv. Group Ltd., FA 1599564 (Nat. Arb. Forum Feb. 12, 2015) (transferring disputed domain name and finding confusing similarity because disputed domain name wholly incorporated complainant’s mark). In fact, in the 2010 WIPO Decision, the Administrative Panel noted that “[i]t is well settled that adding a generic term to a mark is not sufficient to avoid confusion.” 2010 WIPO Decision. Panels functioning under the National Arbitration Forum agree. The addition of a generic term to a trademark does “not save [it] from the realm of confusing similarity under the standards of the Policy.” Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barderdi, FA 1617061 (Nat. Arb. Forum June 9, 2015) (transferring disputed domain name to complainant); see also Google Inc. v. Abraham Joseph, FA 1616022 (Nat. Arb. Forum June 2, 2015) (finding the insertion of a single generic word insufficient to distinguish the domain names from complainant’s trademark and ultimately transferring the disputed domain names); Guess? IP Holder L.P. and Guess?, Inc. v. daqi zhu/Zhu DaQi, FA 1615887 (Nat. Arb. Forum June 2, 2015) (transferring the disputed domain name and holding the addition of a descriptive term insufficient to distinguish it from complainant’s trademark).
The Disputed Domain Name merely inserts the generic term “shop” to the end of the domain name that wholly incorporates Complainants’ trademark. Thus, the Disputed Domain Name is at minimum confusingly similar, if not identical, to the distinctive BEYONCÉ mark and is likely to cause consumer confusion.
A. Respondent Has No Rights Or Legitimate Interest In The Disputed Domain Name
Like the respondent in the 2010 WIPO Decision, the Respondent here lacks rights or legitimate interests in the Disputed Domain Name. Respondent has never been an authorized representative or agent of Complainants. Complainants’ adoption and use of the BEYONCÉ mark at least as early as 2003 precedes Respondent’s registration of the Disputed Domain Name, which took place on July 3, 2009. Upon information and belief, Respondent had knowledge of Complainants’ distinctive BEYONCÉ mark and fame prior to registration of the Disputed Domain Name. Upon information and belief, Respondent is not commonly known as “Beyoncé.” see also Hafbrick Studios Pty, LTD./Kate Hynes v. REDACTED, FA 1592887 (Nat. Arb. Forum Jan. 7, 2015) (transferring domain name to complainant where there was no evidence that respondent was commonly known as the disputed domain name). Respondent, therefore, lacks rights or legitimate interests in the Disputed Domain Name.
Further, Respondent has deliberately attempted to trade upon the goodwill associated with Complainants. Respondent has not used the Disputed Domain Name in connection with a good faith, bona fide offering of goods and services. Respondent operates <beyonceshop.com>, which features cosmetics, soaps and lotions, among other things, all branded with the BEYONCÉ mark, without authorization from Complainants. Upon information and belief, Respondent uses the Disputed Domain Name to mislead and misdirect Internet users searching for official BEYONCÉ merchandise to its unauthorized, commercial website for its financial benefit. Callahan Decl. at ¶20; see also Guess? IP Holder L.P. and Guess?, Inc. v. daqi zhu/Zhu DaQi, FA 1615887 (Nat. Arb. Forum June 2, 2015) (transferring domain name where it was used to sell goods directly competing with complainant’s products); Jack Wolfskin Ausrüstung für Dresden GmbH & Co., Kraal v. Luigi Cardiae, FA 1595635 (Nat. Arb. Forum Jan. 28, 2015) (transferring domain name where respondent was using it in connection with an unauthorized marketplace for counterfeit goods that presented itself as being endorsed by complainant); eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (holding that the sale of counterfeit products is evidence that respondent does not make a bona fide offering of goods or services or a legitimate non-commercial or fair use of a disputed domain name). Taken together, the Disputed Domain Name and the products offered on Respondent’s website give the false impression that they are authorized by and/or affiliated with Complainants.
For the foregoing reasons, the Panel should find that Respondent has no rights or legitimate interests in the Disputed Domain Name.
B. Respondent Registered and Is Using The Disputed Domain Name In Bad Faith
The Panel should find that Respondent has registered and used the Disputed Domain Name in bad faith. Upon information and belief, Respondent had knowledge of Complainants’ distinctive BEYONCÉ mark and its fame prior to registration of the Disputed Domain Name. Upon information and belief, Respondent, in common with the general public, is well- aware of the valuable goodwill and reputation represented and symbolized by the BEYONCÉ mark. Despite this knowledge, Respondent wholly incorporates Complainants’ BEYONCÉ mark in the Disputed Domain Name. Complainants have not granted a license or consented to Respondent’s use of the BEYONCÉ mark, and there is no disclaimer as to source or sponsorship on the website. Id. at ¶23; see Google v. Joey Martelli, FA 1597126 (Nat. Arb. Forum Feb. 7, 2015) (transferring domain name where respondent had not been authorized to use complainant’s mark and was not affiliated with complainant in any way).
There can be no doubt that Respondent has intentionally attempted to profit from its bad faith registration and use of the Disputed Domain Name because (i) the BEYONCÉ mark is a valuable commercial asset; (ii) Complainants have expended substantial amounts of time and money promoting and marketing goods and services under the BEYONCÉ brand name; (iii) upon information and belief, Respondent uses the Disputed Domain Name to profit from the sale of unauthorized goods bearing the BEYONCÉ mark; and (iv) Respondent’s use of the BEYONCÉ mark to market and sell goods on the <beyonceshop.com> website demonstrates knowledge of Complainant Beyoncé’s popularity and success and the intent to trade upon the goodwill associated with the BEYONCÉ mark. See Jack Wolfskin Ausrüstung für Drassen GmbH & Co., KGaA v. Luigi Cardinaee, FA 1595635 (Nat. Arb. Forum Jan. 28, 2015) (“The use of a domain name to sell counterfeit goods bearing an infringed mark provides sufficient basis to establish a respondent’s actual knowledge . . .” and to support a finding of bad faith registration); Pearson Education, Inc. v. Osman Atasoy, FA 1589099 (Nat. Arb. Forum Dec. 23, 2014) (transferring domain name to complainant and finding bad faith where respondent had actual knowledge of complainant’s rights in the marks).
Respondent’s use of the Disputed Domain Name to generate confusion and attract users for commercial gain is bad faith use. Panels have found bad faith where the domain name in question causes consumer confusion strictly for commercial gain. See, e.g., Perot Sys. Corp. v. Perot.net, FA 195312 (Nat. Arb. Forum Aug. 29, 2000); American Cheerleader Media, LLC v. ilir shoshi/cheer, FA 1592319 (Nat. Arb. Forum Jan. 20, 2015) (finding bad faith where respondent used the disputed domain name to attract users to its website for financial gain). Respondent registered and is using the Disputed Domain Name with full knowledge of Complainants’ ownership of the BEYONCÉ mark and with full knowledge that it was using Complainants’ BEYONCÉ mark to profit from the sale of unauthorized merchandise. Thus, Respondent’s conduct in registering and using the Disputed Domain Name is intentional, willful and in bad faith.
For the foregoing reasons, Complainants respectfully request that the Panel transfer the Disputed Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 BEYONCÉ mark in connection with a wide variety of goods and services, including clothing, perfumery, lotions, entertainment services, handheld and mobile digital electronic devices, and paper goods. Complainant registered the BEYONCÉ mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,879,852, registered Aug. 31, 2004). Complainant’s trademark registrations sufficiently demonstrate its rights pursuant to Policy ¶4(a)(i). Complainant’s registration with the USPTO (or any other governmental authority) adequately prove its rights under Policy ¶4(a)(i). See OL 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)”). It is not necessary for Complainant to prove rights in Respondent’s home country, just that Complainant have some rights somewhere. Complainant has established its rights in the BEYONCÉ mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <beyonceshop.com> domain name is confusingly similar to the BEYONCÉ mark as it incorporates the mark fully and merely adds the generic term “shop” and the gTLD “.com.” Such minor alterations are insufficient to prevent a finding of confusing similarity under Policy ¶4(a)(i). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Additionally, it is of note that Complainant has enjoyed success over a respondent who registered a domain name with similar salient features. See Beyoncé Knowles v. Sonny Ahuja, D2010-1431 (WIPO Oct. 15, 2010) (finding that the <beyoncefragrance.com> domain name is identical or confusingly similar to Complainant’s BEYONCÉ mark.). The addition of a gTLD must be ignored under a Policy ¶4(a)(i) analysis because domain name syntax requires a gTLD. Furthermore, Complainant uses the <shop.beyonce.com> domain name. Respondent’s domain name is strikingly similar. Respondent’s <beyonceshop.com> domain name is confusingly similar to the BEYONCÉ mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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. Respondent has never been authorized to use of the BEYONCÉ mark in any form or fashion. The WHOIS information denotes the registrant of record for <beyonceshop.com> as “Chanphut / Beyonce Shop.” However, Complainant claims Respondent is counterfeiting Complainant’s goods and essentially passing Respondent off as if it was Complainant…a fact Respondent does not deny. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). This Panel finds Respondent is not commonly known by <beyonceshop.com> pursuant to Policy ¶4(c)(ii).
Complainant claims Respondent’s resolving website features cosmetics, soaps and lotions for sale, all featuring the BEYONCÉ mark, without authorization from Complainant. Incorporating a complainant’s mark in a commercial website without a complainant’s authorization is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (finding that the respondent was using a domain name that falsely conveyed an association with complainant and lead Internet users to his complaint website. This was evident by the fact that complainant’s EASTMAN trademark figured prominently at the top of the website. The Panel found respondent was “illegitimately identifying himself as the complainant and attracting visitors to his site by trading off the complainant’s goodwill in its EASTMAN CHEMICALS trademark.”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). Respondent has failed to use the disputed domain name within the purview of either Policy ¶¶4(c)(i) or (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the disputed domain name in bad faith. Respondent has incorporated the BEYONCÉ mark in its sale of various products under a domain name incorporating Complainant’s mark fully in an attempt to profit from the confusion Internet users face as to the source, sponsorship, affiliation, or endorsement of its website or location as per the language of Policy ¶4(b)(iv). Past panels have found bad faith attraction for commercial gain under similar circumstances. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Respondent appropriated Complainant’s BEYONCÉ mark to sell various products online with no authorization to do so, effectively passing itself off as Complainant. Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶4(b)(iv).
Complainant claims it is inconceivable Respondent could have registered the <beyonceshop.com> domain name without actual knowledge of Complainant's rights in light of the fame and notoriety of Complainant's BEYONCÉ mark. This Panel agrees with Complainant. Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds actual knowledge is adequate evidence of bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <beyonceshop.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, August 3, 2015
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