Jeffree Star and Jeffree Star Cosmetics LLC v. Lisa Katz / Domain Protection LLC
Claim Number: FA1607001682277
Complainant is Jeffree Star and Jeffree Star Cosmetics LLC (“Complainant”), represented by Adam Mandell of Millen,White, Zelano & Branigan, P.C., Virginia, USA. Respondent is Lisa Katz / Domain Protection LLC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jeffreestar.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 1, 2016; the Forum received payment on July 1, 2016.
On July 6, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <jeffreestar.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 July 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 2016 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@jeffreestar.com. Also on July 11, 2016, 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 August 9, 2016 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant asserts common law rights in the JEFFREE STAR trademark dating back to at least 2003. The mark is used in connection with the promotion of the makeup and fashion skills of Jeffree Star. The <jeffreestar.com> domain name is identical or confusingly similar to the JEFFREE STAR trademark because the domain name contains the entire mark and differs only by the addition of the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Furthermore, Respondent is using the domain name to display competing hyperlinks, and thus Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has engaged in bad faith registration and use. Respondent is attempting to commercially profit from a likelihood of confusion, and therefore is displaying bad faith under Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a successful American entertainer and personality.
2. Complainant has acquired common law trademark rights in JEFFREE STAR, dating back to at least 2003. The JEFFREE STAR mark is used in connection with the promotion of Complainant’s makeup and fashion skills and it is recognized as the mark of Complainant with respect to the provision of those goods and services.
3. Respondent registered the <jeffreestar.com> domain name on or about April 27, 2005.
4. The domain name resolves to a website containing links to goods and services in competition with those of 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(f), 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 (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 first issue that arises is whether Complainant has a trademark or service mark on which he can rely. Complainant submits that he has common law rights in the JEFFREE STAR trademark, which is used in connection with the promotion of the makeup and fashion skills of Jeffree Star and the provision of his goods and services to further that objective. In order to establish common law rights in a trademark, a complainant must show that the mark has acquired secondary meaning. Relevant evidence of secondary meaning includes “evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising.” Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015). The Panel notes Complainant’s attached Exhibits 5–8, which Complainant has submitted in support of its argument for secondary meaning. As the Panel finds that Complainant has submitted evidence sufficient to suggest secondary meaning, the Panel finds that Complainant has established common law rights in the JEFFREE STAR trademark and that Complainant has had those rights since at least 2003. It is clear from the evidence that Complainant uses the mark JEFFREE STAR mark in connection with the promotion of Complainant’s makeup and fashion skills and that it is recognized as the mark of Complainant with respect to the provision of those goods and services.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s JEFFREE STAR mark. Complainant submits that the <jeffreestar.com> domain name is identical or confusingly similar to the JEFFREE STAR trademark. In support of this argument, Complainant notes that the domain name contains the entire mark and differs only by the addition of the gTLD “.com.” Prior panels have found that the addition of the “.com” suffix is inconsequential. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (‘gTLD’) ‘.com’ does not serve to adequately distinguish the Domain Name from ‘the mark.”). Therefore, the Panel finds that the <jeffreestar.com> domain name is identical to the JEFFREE STAR trademark.
Complainant has thus made out the first of the three elements that he must establish.
It is now well established that 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s JEFFREE STAR
trademark and to use it in the disputed domain name;
(b) Respondent uses the disputed domain name to resolve to a website displaying pay-per-click links promoting products that compete with Complainant. These links divert potential customers away from Complainant to third-party websites, thereby disrupting Complainant’s business;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant asserts that Respondent is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use the JEFFREE STAR mark in domain names. The Panel notes that “Liza Katz” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e)Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant submits that the disputed domain name resolves to a webpage that displays competing hyperlinks. The Panel notes Complainant’s attached Exhibit 9, which purports to show a screenshot of the webpage resolving from the disputed domain name. Prior panels evaluating such conduct have found that such behavior cannot amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). As the Panel agrees with Complainant, it finds for Complainant on Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has engaged in bad faith registration and use. Complainant contends that Respondent is displaying bad faith under Policy ¶ 4(b)(iv) by attempting to profit commercially from a likelihood of confusion. To support this claim, Complainant submits that the disputed domain name resolves to a webpage that displays competing hyperlinks. The Panel again notes Complainant’s attached Exhibit 9, which purports to show a screenshot of the webpage resolving from the disputed domain name. Prior panels evaluating such conduct have found bad faith under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). As the Panel agrees with Complainant, it finds bad faith under Policy ¶ 4(b)(iv).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the JEFFREE STAR mark and in view of its conduct since the registration, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jeffreestar.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 10, 2016
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