Tarte, Inc. v. Protection of Private Person / Privacy Protection
Claim Number: FA1801001767340
Complainant is Tarte, Inc. (“Complainant”), represented by Daniel I. Ackerman of Brownstein Hyatt Farber Schreck, LLP, Colorado, USA. Respondent is Protection of Private Person / Privacy Protection (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tartecosmetics.ru.com>, registered with Registrar of Domain Names REG.RU 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.
Darryl C. Wilson, as Panelist.
Complainant certifies it requested the mandatory CentralNic Mediation and the mediation process was terminated because Respondent failed to reply within 10 calendar days.
Complainant submitted a Complaint to the Forum electronically on January 17, 2018; the Forum received payment on January 25, 2018.
On January 17, 2018, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <tartecosmetics.ru.com> domain name(s) is/are registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the names. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On February 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2018 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@tartecosmetics.ru.com. Also on February 2, 2018, 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 February 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, 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 to the CDRP 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 CDRP 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, Tarte, Inc., is a leading manufacturer of high-quality, luxury cosmetics, makeup, beauty, and skincare products throughout the world. Complainant has rights in the TARTE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) and Russia’s intellectual property organization, Rospatent (e.g. USPTO—Reg. No. 2,742,879; Rospatent—Reg. No. 504999, registered Jan. 27, 2014).
Respondent has no rights or legitimate interests in the <tartecosmetics.ru.com> domain name. Complainant has no relationship with Respondent. Respondent uses the domain name to resolve to a website which is designed to look nearly identical to Complainant’s website and purports to sell goods which are either counterfeit or obtained through unlawful means.
Respondent registered and is using the <tartecosmetics.ru.com> domain name in bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website through fraudulent means by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website and of the products sold through the website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Tarte, Inc. of New York, NY, USA. Complainant is the owner of domestic and international registrations for the mark TARTE, and related marks, which it has used continuously since at least as early as 2014, in connection with its manufacture and distribution of luxury cosmetics.
Respondent is Protection of Private Person / Privacy Protection, of Moscow, Russia. Respondent’s registrar’s address is unlisted. The Panel notes that Respondent registered the disputed domain name on or about September 18, 2017.
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 or is being used in bad faith.
The CDRP also requires that Complainant have paricipated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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.”).
Complainant claims rights in the TARTE mark based upon registration of the mark with the USPTO and Russia’s intellectual property organization, Rospatent (e.g. USPTO—Reg. No. 2,742,879; Rospatent—Reg. No. 504999, registered Jan. 27, 2014). Registration of a mark with multiple trademark agencies is sufficient to establish rights in that mark. See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark). The Panel here finds that Complainant’s registration of the TARTE mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant does not argue Respondent’s <tartecosmetics.ru.com> domain name is confusingly similar to the TARTE mark. Complainant does state its main website is located at <tartecosmetics.com>. Confusing similarity is typically argued through a showing of a domain name’s inclusion of a mark, and of the comparison between the claimed mark and the disputed domain name; though only a low threshold of proof is required. See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law); see also Desktop Media, Inc. v. Desktop Media, Inc., FA 96815 (Forum Apr. 12, 2001) (“[F]or the limited purposes of the domain name dispute resolution process[,] a low threshold of proof is all that is required to meet the first element . . . .”). The Panel notes the <tartecosmetics.ru.com> domain name includes the TARTE mark in its entirety, and adds the descriptive term “cosmetics,” as well as the “.ru” country code top-level domain (“ccTLD”) and the “.com” generic top-level domain (“gTLD”). The Panel here finds the <tartecosmetics.ru.com> domain name is confusingly similar to the TARTE mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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), 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). The Complainant has made a prima facie case.
Complainant does not explicitly argue that Respondent is not commonly known by the <tartecosmetics.ru.com> domain name, though it does contend Complainant has no relationship with Respondent. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent in registering the domain name. As a result, the Panel notes that the WHOIS information of record identifies Respondent as “Protection of Private Person / Privacy Protection.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel here finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent uses the domain name to pass off as Complainant in order to offer for sale counterfeit or illegally-obtained goods. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Complainant contends that the domain name resolves to a website which appears to have been built through technology that cloned Complainant’s legitimate website. Specifically, Complainant argues that the infringing website uses Complainant’s marks, logos, copyrighted photos, product descriptions, trademarked product names and other material. The infringing website also includes a copyright notice at the bottom of the page stating “© 2017 Tarte Inc. All Rights Reserved.” The Panel finds that Respondent has not used the <tartecosmetics.ru.com> domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use, and therefore does not have rights or legitimate interests in domain name.
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant claims Respondent’s use of the <tartecosmetics.ru.com> domain name to pass off as Complainant in order to offer counterfeit or unlawfully obtained goods demonstrates that Respondent registered and used the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). The Panel again notes Complainant’s contention, and evidence, that Respondent copies Complainant’s protected images and logos, which it allegedly uses in selling products Complainant believes are counterfeit. The Panel here finds that Respondent registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the CDRP Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <tartecosmetics.ru.com>be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 13, 2018
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