Bare Escentuals Beauty, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1407001572597
Complainant is Bare Escentuals Beauty, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bareeminerals.com>, <baremineral.com>, <bareminerls.com>, <bareminreals.com>, and <ilovebareminerals.com>, registered with Internet.Bs Corp.
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 National Arbitration Forum electronically on July 30, 2014; the National Arbitration Forum received payment on July 30, 2014.
On July 31, 2014 and August 8, 2014, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <bareeminerals.com>, <baremineral.com>, <bareminerls.com>, <bareminreals.com>, and <ilovebareminerals.com> domain names are registered with Internet.Bs Corp. and that Respondent is the current registrant of the names. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 September 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 2014 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@bareeminerals.com, postmaster@baremineral.com, postmaster@bareminerls.com, postmaster@bareminreals.com, postmaster@ilovebareminerals.com. Also on September 4, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 29, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant argues the BAREMINERALS mark is used to promote various skin and body care products. The mark is registered with the United States Patent and Trademark Office ("USPTO") and these domain names are confusingly similar to said mark.
Respondent has no rights or legitimate interests in the domain names. First, Respondent has never been commonly known by the domain names. Further, the domain names have never been used in a legitimate manner and are instead used to house generic advertising to third parties.
Respondent registered and uses all of the domain names in bad faith. Respondent is holding off some of the domain names for sale. Respondent has a history of bad faith. Also, Respondent’s conduct amounts to a disruption of Complainant’s business. Respondent is profiting from the likelihood that Internet users will confuse Complainant as a source or origin of the content on the disputed domain names’ websites. Further, Respondent has engaged in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the skin and body care products industry.
2. Complainant is the registered owner of the BAREMINERALS mark which is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,231,607, registered Feb. 22, 2000).
3. The earliest date on which any one of disputed domain names was registered was July 9, 2004.
4. The disputed domain names have been used to support generic advertising to third parties.
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues the BAREMINERALS mark is used by Complainant to promote various skin and body care products. The mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,231,607, registered Feb. 22, 2000). The Panel finds that this registration evidences Complainant’s rights in the BAREMINERALS mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s BAREMINERALS trademark. Complainant claims the <bareeminerals.com>, <baremineral.com>, <bareminerls.com>, <bareminreals.com>, and <ilovebareminerals.com> domain names are confusingly similar to the BAREMINERALS mark. The Panel notes that all of the <bareeminerals.com>, <baremineral.com>, <bareminerls.com>, and <bareminreals.com> domain names appear to be misspellings of the BAREMINERALS mark, whereas the <ilovebareminerals.com> domain name spells the mark correctly and adds the affectionate expression “ilove” to the mark. The Panel agrees that the misspellings of the mark and the addition of the generic top-level domain (“gTLD”) “.com” are irrelevant here. See Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain). The Panel further agrees that the phrase “ilove” does little to distinguish the domain name from the mark, as such a phrase commends the mark and is suggestive of an association with BAREMINERALS as a trademark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel finds Policy ¶ 4(a)(i) confusing similarity with respect to all of the disputed domain names.
Complainant has thus made out the first of the three elements that it 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 names 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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has taken Complainant’s BAREMINERALS trademark and used it in its domain names, in all cases except one making only minor spelling alterations, implying that the domain names are official domain names of Complainant leading to official websites of Complainant which is not true and in the case of the remaining domain name adding the expression ‘ilove” before the trademark, which asserts a relationship with the trademark;
(b) Respondent has then caused the domain names to resolve to websites used to support generic advertising to third parties.
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent has never been commonly known by these disputed domain names. The Panel notes that “Domain Administrator / Fundaction Private Whois” is listed as registrant for these disputed domain names in the WHOIS information. The Panel agrees that as no other evidence in the record supports the position that Respondent is known by these domain names, a case under Policy ¶ 4(c)(ii) has not been made out. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute);
(e) Further, Complainant contends that the domain names have never been used in a legitimate manner and are instead used to house generic advertising to third parties. The Panel notes that all of the domain names resolve to websites populated with hyperlink advertisements. See Compl., at Attached Ex. H. The Panel agrees that as the disputed domain names are being used to promote an array of related and competing goods, there is no Policy ¶ 4(c)(i) bona fide offering of goods or services, nor is there a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See 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)).
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 names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Respondent is holding some of the domain names for sale. The Panel notes Exhibit I where the <baremineral.com>, <bareminerls.com>, and <ilovebareminerals.com> domain names’ WHOIS information explicitly promotes the sale of the domain names. The Panel finds that offering domain names for sale is evidence of Policy ¶ 4(b)(i) bad faith. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Secondly, Complainant argues that Respondent’s history of cybersquatting evinces Respondent’s current bad faith. In Exhibit N, Complainant provides several decisions in which domain names were transferred from Respondent as a consequence of bad faith: e.g., Twentieth Century Fox Film Corp. v. PPA Media Services / Ryan G Foo, FA 1467717 (Nat. Arb. Forum Dec. 11, 2012). The Panel agrees that Respondent has engaged in a repeated pattern of bad faith, and therefore finds evidence of bad faith pursuant to Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Thirdly, Complainant claims that Respondent’s conduct in its use of all of the domain names amounts to a disruption of Complainant’s business. The Panel agrees that Respondent appears to be using all of the domain names to facilitate the proliferation of advertisements. See Compl., at Attached Ex. H. The Panel finds that Respondent’s provision of competing hyperlinks on the domain names’ websites for which it is responsible evidences an intent to disrupt Complainant’s business within the meaning of Policy ¶ 4(b)(iii) bad faith. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Fourthly, Complainant argues that Respondent is profiting from the likelihood that Internet users will confuse Complainant as a source or origin of the content on the disputed domain names’ websites. As the Panel agrees the content of the domain names’ websites, as illustrated in Exhibit H, evinces a likelihood of confusion, the Panel finds Policy ¶ 4(b)(iv) bad faith. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Fifthly, Complainant argues that Respondent’s bad faith is seen through its typosquatting behavior. In Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), the panel explained, “Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” In the instant case, the Panel notes the <bareeminerals.com>, <baremineral.com>, <bareminerls.com>, and <bareminreals.com> domain names appear to be misspellings of the BAREMINERALS mark. As the Panel agrees that Respondent has attempted to take advantage of typographical errors made by internet users, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii) as it relates to the <bareeminerals.com>, <baremineral.com>, <bareminerls.com>, and <bareminreals.com> domain names. Typosquatting is inapplicable to the <ilovebareminerals.com> domain name as the addition of “ilove” goes well beyond an incorrect key stroke or common misspelling which is the essence of typosquatting. However, the modus operandi of Respondent makes it clear that the domain name <ilovebareminerals.com> has also been registered and used in bad faith.
Finally, 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 names using the Complainant’s BAREMINERALS trademark and its subsequent use of the disputed domain names, Respondent registered and used them 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 <bareeminerals.com>, <baremineral.com>, <bareminerls.com>, <bareminreals.com>, and <ilovebareminerals.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 30, 2014
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