Garcoa, Inc. v. Janeen Arshan / Nature's Beauty Mix LLC
Claim Number: FA2103001937648
Complainant is Garcoa, Inc. (“Complainant”), represented by Michael A. Painter, California, USA. Respondent is Janeen Arshan / Nature's Beauty Mix LLC (“Respondent”), represented by STROOCK, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <naturesbeautymix.com>, registered with NameCheap, Inc.
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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 23, 2021; the Forum received payment on March 23, 2021.
On March 23, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <naturesbeautymix.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 March 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2021 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@naturesbeautymix.com. Also on March 29, 2021, 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.
A timely Response was received and determined to be complete on April 23, 2021.
Complainant’s Additional Submission was received April 29, 2021 and Respondent’s Additional Submission was received on May 3, 2021, both were considered.
On May 4, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant notes that on December 1, 2020, a complaint was filed in the United States District Court of the Central District of California, alleging Respondent use of Complainant’s NATURE”S BEAUTY mark in advertising and on the sale of skin and hair care products on its website that was hosted on the <naturesbeautymix.com> domain name were direct acts of infringements of Complainant’s mark.
Respondent states Complainant filed a complaint for trademark infringement, cyber-squatting, and unfair competition in the United States District Court for the Central District of California on December 1, 2020. The case was voluntarily dismissed by Complainant on March 23, 2021, prior to Respondents’ response to Complainant’s claims.
Since the case was voluntarily dismissed and not decided on the merits, the panel may proceed with the UDRP filing. See eProperty Direct LLC v. Miller, FA 836419 (Forum Jan. 3, 2007) (holding that the panel could decide the dispute under Rule 18(a) of the Policy “since the legal proceedings referred to by the parties appear to be concluded and Orders made. Moreover,… those Orders do not touch directly on the disposition of the disputed domain name or on the parties’ intellectual property rights.”).
A. Complainant
Complainant manufacturers and distributes lines of skin and hair care products. Complainant has rights in the NATURE’S BEAUTY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,512,306, registered Nov. 27, 2001). See Compl. Ex. 1. Respondent’s <naturesbeautymix.com> domain name is identical or confusingly similar to Complainant’s mark as Respondent fully incorporates Complainant mark.
Complainant contends Respondent has no rights or legitimate interests in the <naturesbeautymix.com> domain name as Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is attempting to pass off as Complainant to sell competing goods.
Respondent registered and uses the <naturesbeautymix.com> domain name in bad faith. Specifically, Respondent is diverting Internet users seeking Complainant to a site that offers competing goods. Furthermore, Respondent had actual or constructive knowledge of Complainant’s mark at the time of registration.
B. Respondent
Complainant has not shown that the disputed domain name is confusingly similar to Complainant’s mark, as Complainant has not provided evidence of any confusion.
Respondent is commonly known by the <naturesbeautymix.com> domain name, as it Respondent is doing business under that name. Respondent has rights and legitimate interest in the disputed domain name, as Respondent has used it to sell goods in a bona fide manner.
Respondent contends Complainant has failed to support their claims that Respondent registered and used the <naturesbeautymix.com> domain name in bad faith. Respondent claims no prior knowledge of Complainant or Complainant’s mark. The disputed domain name was registered over four years ago and was registered before Complainant established its own online presence. The <naturesbeautymix.com> domain name was registered on May 17, 2016.
Complainant, has established trademark rights to the mark NATURE’S BEAUTY, but has failed to establish that Respondent has no rights or legitimate interest with respect to the domain, and thus has failed to establish all necessary elements of its Complaint under the UDRP Policy.
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.
Complainant claims rights in the NATURE’S BEAUTY mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,512,306, registered Nov. 27, 2001). See Compl. Ex. 1. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel may find that the Complainant has rights in the NATURE’S BEAUTY mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <naturesbeautymix.com> domain name is identical or confusingly similar to Complainant’s mark as Respondent fully incorporates Complainant mark. A finding that a complainant’s mark and a disputed domain name are identical or confusingly similar may be appropriate when the mark is fully incorporated into the domain name under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Here, the term “mix” is added to the mark, however, the inclusion of generic terms may not overcome a finding of confusing similarity. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore, Respondent’s <naturesbeautymix.com> domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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 an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent fails to use the <naturesbeautymix.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends Respondent is attempting to pass off as Complainant to sell competing goods. Using a disputed domain name to deceive Internet users into believing a respondent and complainant are connected in some manner may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Here, Complainant alleges that Respondent sold similar products as Complainant on the disputed domain name, and now uses it to redirect Internet users to Respondent’s other domain name, and provides screenshots of the disputed domain name’s resolving webpage as evidence. See Compl. Ex. 7.
After Complainant has established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii), a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015)
Respondent contends it has rights and legitimate interest in the disputed domain name because Respondent is commonly known by the <naturesbeautymix.com> domain name. Specifically, Respondent has offered evidence it is and has been engaged in a legitimate business under that name since 2017. Using a disputed domain name to reflect a business name may vest rights and legitimate interest in a respondent under Policy ¶ 4(c)(ii). See Navigant Consulting, Inc. v Bradley Shive / Navigant Technologies, FA 1587953 (Forum Dec. 17, 2014) (finding that respondent had rights and legitimate interests in the <naviganttechnologies.com> and <naviganttech.com> domain names because respondent had provided evidence of doing business as “Navigant Technologies” “before Complainant’s registration of its NAVIGANT marks and before receiving a notice of [the domain] dispute”). Here, Respondent provides copies of the Articles of Organization for Respondent’s business under the name Nature’s Beauty Mix, LLC, and argues the disputed domain name reflects that business name. See Resp. Ex. A. Therefore, Respondent has rights and legitimate interest in the disputed domain name under Policy ¶ 4(c)(ii).
Contrary to Complainant’s contention that “there is nothing in the record” to support Respondent’s legitimate use, Respondent has submitted evidentiary proof of Articles of Organization for “Nature’s Beauty Mix, LLC” filed with the NYS Department of State, and in use for over 4 years. See Resp. Ex. A. Respondent has formal rights and legitimate interest in the disputed domain name, as Respondent has established it uses the name to sell goods in a bona fide manner for over 4 years. Specifically, Respondent sells skin and hair care products. Using a domain name to sell competing goods may be a bona fide use when the website is used to sell respondent’s goods and has retained that use for the duration of the domain name’s existence. See Modern Props, Inc. v. Wallis, FA 152458 (Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name). Here, the <naturesbeautymix.com> domain name has been used continuously since registration to sell Respondent’s goods, using its legitimate, duly licensed business name. Therefore, the Panel finds Respondent has rights and legitimate interest in the disputed domain name under Policy ¶ 4(c)(i) or (iii).
Since the Panel concludes that Respondent has rights or legitimate interests in the <naturesbeautymix.com> domain name pursuant to Policy ¶ 4(a)(ii), the issue of whether Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii) need not be addressed. See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
This finding in favor of Respondent is limited solely to Complainant’s failure to meet the requirements for transfer under the Policy. The Panel makes no determination as to any other causes of action or claims Complainant may have against Respondent.
Having not established at least one of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <naturesbeautymix.com> domain name REMAIN WITH Respondent.
David P. Miranda, Esq., Panelist
Dated: May 17, 2021
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