Bare Escentuals Beauty, Inc. v. Jeff Lander
Claim Number: FA1408001576291
Complainant is Bare Escentuals Beauty, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Jeff Lander (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <breminerals.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 21, 2014; the National Arbitration Forum received payment August 21, 2014.
On August 24, 2014, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <breminerals.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd verified that Respondent is bound by the Fabulous.com Pty Ltd registration agreement and 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 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 22, 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@breminerals.com. Also on September 2, 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 25, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson, to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 makes the following allegations in this proceeding:
Complainant holds rights in the BAREMINERALS mark through United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,321,607 registered Feb. 22, 2000). Complainant uses the BAREMINERALS mark in connection with cosmetics and body care products. The <breminerals.com> domain name is confusingly similar to the BAREMINERALS mark.
Respondent lacks rights in the <breminerals.com> domain name. Respondent has no affiliation with Complainant and no evidence indicates that Respondent is commonly known by the disputed domain name. Respondent uses the domain name in connection with a website featuring links in competition with Complainant. Such use does not fall within the protections of Policy ¶¶ 4(c)(i) and (iii).
Respondent registered and is using the domain name in bad faith. Respondent listed the domain name for sale. Respondent has a history of bad faith as evidenced by prior UDRP decisions. Respondent is in violation of Policy ¶ 4(b)(iii) as the domain name resolves to promote competing links. Respondent impermissibly benefits from these links as they generate click-through revenue. And finally, Respondent has engaged in typosquatting.
Respondent’s Response:
Respondent did not submit a response. The Panel notes that Respondent registered the disputed domain name February 4, 2007.
Complainant established that it has rights and legitimate interests in the mark contained within the disputed domain name.
Respondent has no such rights or legitimate interests.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant uses the BAREMINERALS mark in connection with cosmetics and skin care products. Complainant holds rights in the BAREMINERALS mark through United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,321,607 registered Feb. 22, 2000). USPTO registration is sufficient to demonstrate Policy ¶ 4(a)(i) rights in the mark irrespective of the respondent’s locality. See 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.”).
The <breminerals.com> domain name is confusingly similar to the BAREMINERALS mark. The Panel notes that the domain name differs from the mark by the omission of the first letter “a” from the otherwise incorporated mark, and the addition of the generic top-level domain (“gTLD”) “.com.” Prior panels have found confusing similarity in similar cases. 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 finds that a misspelling of the mark and affixation of a gTLD are not enough to distinguish the name from the mark for purposes of Policy ¶ 4(a)(i). Therefore, the Panel finds that the <breminerals.com> domain name is confusingly similar to the BAREMINERALS mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show that it does have such 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 argues that Respondent lacks rights in the <breminerals.com> domain name. In so arguing, Complainant explains that Respondent has no affiliation with Complainant and that no evidence indicates that Respondent is commonly known by the disputed domain name. The Panel notes the WHOIS indicates “Jeff Lander” as the registrant of record. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. As Respondent failed to submit a response indicating otherwise, the Panel agrees that available evidence does not suggest Respondent is commonly known by the <breminerals.com> name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent uses the domain name in connection with a website featuring links in competition with Complainant, and that such use does not fall within the protections of Policy ¶¶ 4(c)(i) and (iii). The Panel finds that the <breminerals.com> domain name resolves to promote links including “Sephora Official Website” and “Maybelline Official Site.” See Compl., at Attached Ex. H. The Panel notes that Sephora and Maybelline operate in the cosmetics field in competition with Complainant. Accordingly, the Panel agrees that the use of the <breminerals.com> domain name to promote competing links does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent’s bad faith is demonstrated by the fact that Respondent has listed the domain name for sale. See Compl., at Attached Ex. I. Prior panels have found a respondent’s willingness to sell a domain name can evidence bad faith in certain circumstances. The panel in CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) explained, “[t]here is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.” The Panel finds Respondent’s offer to sell the domain name indicates bad faith pursuant to Policy ¶ 4(b)(i).
Next, Complainant argues that Respondent has a history of bad faith as evidenced by prior UDRP decisions. See Compl., at Attached Ex. N; e.g., Sears Holdings Corp. v. Jeff Lander, FA 1539818 (Nat. Arb. Forum Feb. 24, 2014). The Panel finds that prior findings against Respondent demonstrate Respondent’s pattern of bad faith, and therefore this Panel finds that Respondent is in violation of 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).
Complainant further argues that Respondent is in violation of Policy ¶ 4(b)(iii) because the domain name resolves to promote competing links. The Panel recalls that the <breminerals.com> domain name resolves to promote links to other players in the cosmetics field, including “Sephora Official Website” and “Maybelline Official Site.” See Compl., at Attached Ex. H. Prior panels have found the use of competing hyperlinks to be disruptive, and therefore amount to bad faith. For example, in David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007), the panel found that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because the respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business. Given the similarities here, the Panel agrees that Respondent’s competing links disrupt Complainant’s business, and therefore this Panel finds evidence of Policy ¶ 4(b)(iii) bad faith.
Similarly, Complainant argues that Respondent impermissibly benefits from these links as they generate click-through revenue. Prior panels have found evidence of bad faith where the respondent relied on competing click-through links to generate traffic and revenue from misdirected Internet users. The panel in Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005), wrote: “The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” The Panel agrees here that Respondent engaged in Policy ¶ 4(b)(iv) bad faith by using the confusingly similar <breminerals.com> domain name to promote click-through links to competitors of Complainant.
And finally, Complainant argues that Respondent engaged in typosquatting, which is further evidence of bad faith. The Panel recalls that the <breminerals.com> domain name differs from the BAREMINERALS mark by the omission of “a” from the mark. This Panel agrees that Respondent attempted to prey on the typographical errors of Internet users, and the Panel thus finds evidence of bad faith under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting, which itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <breminerals.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 7, 2014
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