Anastasia Beverly Hills, LLC v. Frieda Balm
Claim Number: FA1901001824746
Complainant is Anastasia Beverly Hills, LLC (“Complainant”), represented by Alexandra A. Holt of Greenberg Traurig, LLP, Georgia, USA. Respondent is Frieda Balm (“Respondent”), New Hampshire, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <anastasia-beverlyhills.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.
Charles A. Kuechenmeister.
Complainant submitted a Complaint to the Forum electronically on January 11, 2019; the Forum received payment on January 11, 2019.
On January 14, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <anastasia-beverlyhills.com> domain name (the 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 January 14, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of February 4, 2019 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@anastasia-beverlyhills.com. Also on January 14, 2019, 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 Forum transmitted to the parties a Notification of Respondent Default.
On February 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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.
A. Complainant
Complainant is a global cosmetics distributor founded in 1997 by Anastasia Soare. It has rights in the ANASTASIA BEVERLY HILLS mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (including Registration No. 3,679,514, registered Sept. 8, 2009). Respondent’s Domain Name is confusingly similar to Complainant’s ANASTASIA BEVERLY HILLS mark as it incorporates that mark in its entirety, merely omitting the spaces between “Beverly” and “Hills,” and adding a hyphen between “Anastasia” and “Beverly” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the Domain Name. Complainant has not authorized her to use its ANASTASIA BEVERLY HILLS mark and she is not commonly known by the Domain Name. Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, she uses it to pass off as Complainant and either sell counterfeit versions of Complainant’s products at deeply discounted prices or fraudulently induce consumers to send payments for product that will never be shipped.
Respondent registered and uses the Domain Name in bad faith. Respondent attempts to disrupt Complainant’s competing business and attract, for commercial gain, users to the web site resolving from the Domain Name by passing off as Complainant to sell counterfeit goods. Furthermore, Respondent had actual knowledge of Complainant’s ANASTASIA BEVERLY HILLS mark prior to registering and using the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 (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 Panel finds as follows with respect to the maters at issue in this proceeding:
Complainant registered its ANASTASIA BEVERLY HILLS mark with the USPTO (Reg. No. 3,679,514) on September 8, 2009. See, Complaint Annex 4. Registration of a mark with the USPTO is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i). Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s Domain Name is confusingly similar to Complainant’s ANASTASIA BEVERLY HILLS mark, as it incorporates the mark in its entirety, merely omitting the spaces between “Beverly” and “Hills,” and adding a hyphen between “Anastasia” and “Beverly” and the “.com” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the ANASTASIA BEVERLY HILLS mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Complainant has not authorized or licensed her to use its ANASTASIA BEVERLY HILLS mark, (ii) she is not commonly known by the Domain Name, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or as a legitimate noncommercial or other fair use because she is using it either to sell counterfeit goods or induce consumers to pay for purchases that will not be fulfilled, and to pass herself off as Complainant. These allegations are supported by competent evidence.
Complainant states that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding 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 Name featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The WHOIS report for the Domain Name submitted as Complaint Annex 18 lists the registrant as “Frieda Balm.” This name bears no resemblance to the Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel is satisfied that Respondent has not been commonly known by the Domain Name within the meaning of Policy ¶ 4(c)(ii).
Complaint Annex 19 is a screenshot of one of the pages in the web site resolving from the Domain Name. It prominently displays the name “Anastasia Beverly Hills” written in a stylized format mimicking exactly Complainant’s registration of its stylized mark with the USPTO (Reg. No. 5,021,515) on August 16, 2016. See, Complaint Annex 5. It also offers beauty products for sale at deeply discounted prices. For example, a lipstick foundation is listed at $3.99 with the price of $25.00 stricken out, and a brow definer is listed at $4.99 with the price of $23.00 stricken out. Complainant submitted additional Annexes featuring products offered by it on its web site at <anastsiabeverlyhills.com> and by Respondent, with those advertised on Respondent’s web site being sold at very substantial discounts below the prices for corresponding product offered on Complainant’s site, e.g., $2.99 versus $18.00 for Dipbrow Pomade. See, Complaint Annexes 22 through 29 inclusive. Complainant argues that the prices advertised on Respondent’s site are so low that they must necessarily be for counterfeit goods or for goods that will not be shipped, as they are well below even the wholesale prices at which anyone could acquire genuine product. Complainant also notes that the packaging for some of Respondent’s products is slightly different from that for corresponding products sold by Complainant, arguing that this is further evidence that Respondent’s products are not genuine.
Further, Respondent’s web pages display banners reading “Anastasia Beverly Hills Cosmetics by Anastasia Beverly Hills” at the bottom of the page. As noted above, they also prominently display the ANASTASIA BEVERLY HILLS stylized mark that is the subject of Complainant’s USPTO Registration Numbers 5,021,515, 5,021,518, 5,021,519 and 5,021,520. See, Complainant Annexes 5 through 8. The web site also contains a section entitled “About Anastasia Beverly Hills” which includes information about Complainant’s founder and its business operations. See, Complaint Annex 30. The general look and feel of Respondent’s web site is very similar if not identical to that of Complainant. It clearly conveys the impression that it is owned and sponsored by Complainant. From this and the evidence discussed above, it is clear that Respondent registered and is using the Domain Name to pass herself off as and impersonate Complainant for the purpose of selling counterfeit goods purporting to be those of Complainant. Using a confusingly similar domain name to create the impression of a non-existent association with a complainant in order to sell unauthorized or counterfeit versions of the complainant’s goods is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”), iWatts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Name discussed above in connection with the rights and legitimate interests analysis also supports a finding of bad faith use and registration, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent registered and is using the Domain Name to sell counterfeit goods, passing herself off as Complainant, and passing her goods off as those of Complainant. As both parties operate in the cosmetics industry, Respondent is clearly a competitor of Complainant. There is no question that her diversion of Internet users seeking Complainant to her own web site disrupts Complainant’s business. This same conduct also amounts to attracting, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site. As such, Respondent’s conduct falls squarely within the circumstances articulated by Policy ¶¶ 4(b)(iii) and (iv). Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products.) Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Further, Complainant has an established presence in the cosmetics industry. This, plus the close similarity between Complainant’s mark, its web site and its <anastasiabeverlyhills.com> domain name on the one hand and Respondent’s Domain Name and web site on the other is convincing evidence that Respondent had actual knowledge of Complainant’s ANASTASIA BEVERLY HILLS mark when she registered the Domain Name in February 2017. See, Complaint Annex 18 for date of registration. The Policy recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <anastasia-beverlyhills.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: February 7, 2019
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