Bare Escentuals Beauty, Inc. v. JIEWEI LI
Claim Number: FA1407001572759
Complainant is Bare Escentuals Beauty, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is JIEWEI LI (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bareescntuals.com>, registered with ENOM, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2014; the National Arbitration Forum received payment on July 31, 2014.
On August 1, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <bareescntuals.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 August 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 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@bareescntuals.com. Also on August 5, 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 August 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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 name be transferred from Respondent to Complainant.
Complainant
Complainant uses the BARE ESCENTUALS mark to promote sale of its skin cream, lotion, and gel products. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,539,966 registered May 23, 1989). The domain name is a confusingly similar misspelling of the BARE ESCENTUALS mark.
Respondent does not have rights or legitimate interests in the domain name. First, Respondent has never been commonly known by this domain name. Second, Respondent is using the <bareescntuals.com> domain name to redirect Internet users to websites featuring generic links to third-party businesses.
Respondent has registered and used the <bareescntuals.com> domain name in bad faith. Respondent has a history of cybersquatting. Respondent is seeking to disrupt Complainant’s business by use of this domain name. Also, Respondent’s use of the domain name for hyperlinks is strong evidence of an intent to profit from the likelihood of confusion through web advertising revenue. Finally, Respondent is a typosquatter.
Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant uses the BARE ESCENTUALS mark to promote sale of its skin cream, lotion, and gel products. The mark has been registered with the USPTO (e.g., Reg. No. 1,539,966 registered May 23, 1989). The Panel finds the USPTO registration to be satisfactory evidence of Policy ¶ 4(a)(i) rights in this proceeding. See, e.g., W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant claims the domain name is a confusingly similar misspelling of the BARE ESCENTUALS mark. The <bareescntuals.com> domain name omits one letter “e” from the mark, omits the mark’s spacing, and adds the generic top-level domain ("gTLD") “.com.” The Panel finds these differences are insufficient to distinguish the domain name from the mark and finds Policy ¶ 4(a)(i) confusing similarity. 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).
Complainant has proven this element.
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 (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 never been commonly known by this domain name. The disputed domain name’s WHOIS information lists “JIEWEI LI” as the registrant of record. The Panel concludes Respondent is not commonly known by the <bareescntuals.com> domain name as there is no evidence in this record suggesting Respondent has ever been commonly known by the domain name within the meaning of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. 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).
Complainant claims Respondent is using the <bareescntuals.com> domain name to redirect Internet users to a website promoting hyperlinks to various websites, including third-party competitors. The Panel finds this use is not bona fide under Policy ¶ 4(c)(i) or legitimate noncommercial or fair under Policy ¶ 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant has proven this element.
Complainant claims Respondent has a history of cybersquatting. Prior decisions adverse to Respondent have been decided under the UDRP, including Blue Nile, Inc. v. Jiewei Li, FA 1411371 (Nat. Arb. Forum Nov. 23, 2011) and Road Runner Sports, Inc. v. Jiewei Li, FA 1411522 (Nat. Arb. Forum Nov. 23, 2011). The Panel finds these prior decisions involving Respondent’s bad faith are evidence of registration in bad faith under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Complainant claims Respondent is seeking to disrupt Complainant’s business. The domain name resolves to a website which promotes, among other things, links to competing beauty and skincare products. The Panel finds this to be disruptive of Complainant’s business, and finds Policy ¶ 4(b)(iii) bad faith. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant claims Respondent’s use of the domain name for hyperlinks is strong evidence of an intent to profit from the likelihood of confusion through web advertising revenue. The Panel concludes Respondent is using the domain name in such a way as to cause a likelihood of confusion from which Respondent is likely to commercially benefit. See, e.g., MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Complainant claims Respondent is a typosquatter. Typosquatting is the practice of registering domain names that capitalize on common typographical errors on the trademarks of others. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). The Panel finds that the <bareescntuals.com> domain name is an example of typosquatting, and finds Policy ¶ 4(a)(iii) bad faith.
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <bareescntuals.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 2, 2014
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