Bare Escentuals Beauty, Inc. v. NAMESTORE.COM - URLCOLLECTION.COM - TOPNAMES.COM / DOMAINS DIRECTOR - CONSTRUCTION PUBLICATIONS, INC.
Claim Number: FA1408001576517
Complainant is Bare Escentuals Beauty, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is NAMESTORE.COM - URLCOLLECTION.COM - TOPNAMES.COM / DOMAINS DIRECTOR - CONSTRUCTION PUBLICATIONS, INC. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <barerminerals.com>, registered with ENOM, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Mr. Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2014; the National Arbitration Forum received payment on August 22, 2014.
On August 25, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <barerminerals.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 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 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@barerminerals.com. Also on August 25, 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.
A timely Response was received and determined to be complete on September 8, 2014.
On September 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Flip Petillion as Panelist.
On September 15, 2014, a timely Additional Submission was received from Complainant.
On September 17, 2014, a timely Additional Submission was received from Respondent.
On September 19, 2014, the registrar of the disputed domain name informed the Forum and the parties that the disputed domain name had expired as of September 4, 2014. The registrar asked the parties if they wished to renew the disputed domain name. On September 24, 2014, both parties answered to the registrar’s request. Complainant indicated that it wished to renew the disputed domain name and Respondent indicated that it would deal with a possible renewal at a later stage.
Having reviewed the communications records, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
1. Complainant has rights in the BAREMINERALS mark under Policy ¶ 4(a)(i).
a. Complainant is an award-winning and trusted source of cosmetics, skincare, and related products for more than thirty years. Complainant is the subsidiary of Bare Escentuals and uses the BAREMINERALS mark in connection with its cosmetic and skincare products.
b. Complainant owns registrations with the United States Patent and Trademark Office (“USPTO”) for the BAREMINERALS mark, as evidenced in Complainant’s Exhibit E. (Reg. No. 2,321,607 registered February 22, 2000).
c. Respondent’s <barerminerals.com> domain name is confusingly similar to Complainant’s BAREMINERALS mark.
2. Respondent has no rights or legitimate interests in the <barerminerals.com> domain name under Policy ¶ 4(a)(ii).
a. Respondent is not commonly known by the disputed domain name. Respondent has no trademark or intellectual property rights in the disputed domain name, and the WHOIS information for the domain lists “Namestore.com-Urlcollection.com-topnames.com” as registrant. Further, Complainant has not authorized Respondent to use the BAREMINERALS mark or the disputed domain name.
b. Respondent uses the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent presumably receives pay-per-click revenue from the use of the links on the resolving website. See Complainant’s Exhibit H.
c. Respondent’s use of the disputed Domain name indicates typosquatting behavior.
3. Respondent registered and is using the <barerminerals.com> domain name in bad faith under Policy ¶ 4(a)(iii).
a. Respondent has the disputed domain name listed for sale. See Complainant’s Exhibit I.
b. Respondent competes with Complainant by offering third-party links to products and services associated with Complainant. The links displayed on Respondent’s resolving website serve to divert Internet users away from Complainant, thus disrupting Complainant’s business.
c. Respondent uses the disputed domain name to resolve to a website offering links for products of Complainant’s, resulting in Respondent’s commercial profit.
B. Respondent
Respondent makes the following contentions:
1. For the past 14 years, Respondent has owned companies that provide services as a contracted domain name registrar reseller.
2. Respondent claims Complainant has no rights in a trademark for BARERMINERALS.COM or BARER MINERALS.
3. There is no proof of actual confusion between Complainant’s mark and the disputed domain name.
4. Complainant waited over 8 years to bring this claim, and thus the doctrine of laches applies.
5. Respondent’s <barerminerals.com> domain name is expired, and thus Respondent has no control over it, or the parked page.
6. Complainant’s actions are a prime example of reverse domain name hijacking. Complainant knew at the time of the filing that they could not prove bad faith registration on this domain name after 8 years of registration.
C. Additional Submissions
In its Additional Submission, Complainant:
1. reiterates its arguments regarding the confusing similarity between its trademarks and the disputed domain name.
2. adds Google search results as additional evidence in order to show that Respondent had knowledge of Complainant’s rights in the trademarks at issue.
3. refers to 2 past UDRP cases involving the Respondent.
4. states that the doctrine of lashes does not apply as a defense.
In its Additional Submission, Respondent:
1. reiterates its arguments regarding the absence of confusion between Complainant’s trademarks and the disputed domain name, and adds new references to cases in order to show that a difference of one letter between a domain name and a trademark does not automatically give a trademark holder, defined and immediate rights to a domain name.
2. contests the relevance of the evidence provided by Complainant by stating that the Google search results are Pay Per Click ad placements. This would explain why the results are on top of the page.
3. more generally contests the reputation of Complainant’s trademarks.
4. states that only 1 of the 2 UDRP cases mentioned by Complainant relates to Respondent, and that this case was settled between the parties.
Complainant owns registrations with the United States Patent and Trademark Office (“USPTO”) for the BAREMINERALS mark, as evidenced in Complainant’s Exhibit E. (i.a. Reg. No. 2,321,607 registered February 22, 2000).
Historical WHOIS records show that Respondent has been the holder of the <barerminerals.com> domain name since at least 2010. The disputed domain name is used to (a) redirect Internet users to a website featuring generic links to third-party websites, some of which relate to the Complainant’s business (b) provide a link offering the domain name for sale.
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 contends that it is an award-winning and trusted source of cosmetics, skincare, and related products for more than thirty years. Complainant states that it is the subsidiary of Bare Escentuals and uses the BAREMINERALS mark in connection with its cosmetic and skincare products. Complainant holds registrations with the USPTO for the BAREMINERALS mark, as evidenced in Complainant’s Exhibit E. The Panel finds that Complainant’s USPTO registrations establish Complainant’s rights in the BAREMINERALS mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Complainant alleges that Respondent’s <barerminerals.com> domain name is confusingly similar to Complainant’s BAREMINERALS mark. The Panel notes that Respondent adds an additional letter “r” to the end of the term “Bare.” The Panel also notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Panels have frequently found that misspelling a word or adding additional letters does not differentiate a domain name from a given mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). Previous panels have also determined that the inclusion of a gTLD is irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds that the misspelling and affixation of a gTLD are together and by themselves, insufficient to distinguish the disputed domain name from the BAREMINERALS mark.
Therefore, the Panel finds the disputed domain name confusingly similar to trademarks in which Complainant has rights pursuant to 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), 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 alleges that Respondent has no rights or legitimate interests in the <barerminerals.com> domain name. Complainant alleges that Respondent is not commonly known by the disputed domain name and that Respondent has no trademark or intellectual property rights in the disputed domain name. Complainant also points to the WHOIS information for the domain and argues that it lists “Namestore.com-Urlcollection.com-topnames.com” as registrant. Further, Complainant has not authorized Respondent to use the BAREMINERALS mark or the disputed domain name for any purpose. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) the panel found that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name. In this case, the Panel considers that Respondent has not shown that it is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant additionally asserts that Respondent uses the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant adds that Respondent presumably receives pay-per-click revenue from the use of the links on the resolving website. See Complainant’s Exhibit H. The Panel notes that some of the links on the resolving website include, “Bare Minerals Skin Care,” “Skin Care Products Online,” “Skin Care Brush,” and “Organic Skin Care Reviews.” See Id. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) where the panel found 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. Accordingly, the Panel finds that Respondent’s use of the disputed domain name in connection with a website that promotes links to competitors of Complainant does not constitute 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).
Complainant asserts that Respondent’s use of the disputed domain name indicates typosquatting behavior. Previous panels have concluded that typosquatting can be used as further evidence that the respondent lacks rights and legitimate interests in the disputed domain name. In LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) the panel found that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names.” The Panel finds that the mere addition of the letter “r” as compared to the Complainant’s trademarks indicates typosquatting behavior, and therefore does not convey rights or legitimate interests to Respondent pursuant to Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i). Complainant argues that Respondent competes with Complainant by offering third-party links to products and services associated with Complainant. Complainant states that the links displayed on Respondent’s resolving website serve to divert Internet users away from Complainant, thereby disrupting Complainant’s business. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) the panel concluded that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii). Accordingly, the Panel considers that there are serious indications that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant further argues that Respondent uses the disputed domain name to resolve to a website offering links for products of Complainant’s as well as products of Complainant’s competitors. Complainant presumes that this results in Respondent’s commercial profit. The panel in Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) wrote, “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.” In the same way, the Panel concludes that Respondent has attempted to mislead users as to Complainant’s affiliation with the resolving content in hopes of financial profit. The Panel therefore finds evidence of Respondent’s bad faith use and registration pursuant to Policy ¶ 4(b)(iv).
Moreover, Complainant states that Respondent's typosquatting behavior is, in and of itself, evidence of bad faith. See Canadian Tire Corp. v. domain adm'r no.valid.email@worldnic.net 1111111111, D2003- 0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent created a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location'.. . through Respondent's persistent practice of 'typosquatting'"); see also Nat'l Ass'n of Prof'l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) ("Typosquatting ... is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith."). The Panel finds that Respondent’s behavior is indeed an additional indication of bad faith.
Finally, Respondent has the disputed domain name listed for sale. See Complainant’s Exhibit I. Prior panels have found that offering a domain name for sale indicates bad faith under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale). In the circumstances of this case, the Panel agrees with these prior panels and finds that the offering of the disputed domain name for sale further indicates bad faith under Policy ¶ 4(b)(i).
Respondent argues that the doctrine of laches should apply as the disputed domain name has been registered over 8 years ago. Even if the Panel would consider the doctrine of laches as evidence for Respondent in its considerations of the elements of the Policy, this doctrine could not apply in this case. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”). In this case, the Panel finds that Respondent has not been able to build up legitimate rights in the disputed domain name since its registration. The Panel also considers that there are enough indications of bad faith registration and use.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barerminerals.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: September 25, 2014
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