Bare Escentuals Beauty, Inc. v. Admin / Conquistador Sat
Claim Number: FA1408001576281
Complainant is Bare Escentuals Beauty, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Admin / Conquistador Sat (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bareminerials.com>, registered with Fabulous.com Pty Ltd.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2014; the National Arbitration Forum received payment on August 21, 2014.
On August 24, 2014, Fabulous.com Pty Ltd confirmed by email to the National Arbitration Forum that the <bareminerials.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bareminerials.com. Also on August 25, 2014, the Written Notice of the Complaint, notifying Respondent of the email 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 19, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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.
A. Complainant
Complainant is a company that sells cosmetics, skincare, and related products under various brand names, including BAREMINERALS. Complainant offers these products through its own boutiques, its websites (including BAREMINERALS.COM), and various other retail channels. Complainant’s BAREMINERALS trademark is registered in countries around the world. Complainant states that the BAREMINERALS product line produces hundreds of millions of dollars in annual revenue, and asserts that the mark has become famous as a result of Complainant’s advertising and widespread consumer and industry recognition.
Complainant contends that the disputed domain name <bareminerials.com> is confusingly similar to its BAREMINERALS mark, characterizing the domain name as a classic example of “typosquatting.” Complainant further contends that Respondent has no rights or legitimate interests in respect of the domain name. In support thereof, Complainant alleges that Respondent has not been commonly known by the domain name; and that Respondent is not sponsored by or legitimately affiliated with Complainant, and has not received permission from Complainant to use its mark. Complainant also alleges that Respondent is using the domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which compete directly with Complainant, and that Respondent receives pay-per-click fees as a result.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith. In support thereof, Complainant notes that the domain name was registered on or after November 18, 2003, well after Complainant registered its mark with the U.S. Patent & Trademark Office. Complainant asserts that Respondent’s “typosquatting” behavior is itself evidence of bad faith, and that Respondent’s use of the domain name to display pay-per-click links to competing websites further demonstrates Respondent’s bad faith. In addition, Complainant states that Respondent has offered the disputed domain name for sale and asserts that Respondent “is a recalcitrant, serial cybersquatter / typosquatter,” citing previous adverse decisions under the Policy involving Respondent and identifying examples of other allegedly typosquatting domain names held by Respondent in support of this assertion.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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 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 disputed domain name incorporates Complainant’s registered mark BAREMINERALS, inserting an additional letter “i” and appending the “.com” top-level domain. These changes are insufficient to distinguish the domain name from Complainant’s mark. See, e.g., La Touraine, Inc. d/ba Naughty America v. Texas Int’l Property Assocs., D2010-1502 (WIPO Nov. 16, 2010) (finding <naughtyamericia.com> confusingly similar to NAUGHTY AMERICA); Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, D2009-0798 (WIPO Aug. 7, 2009) (finding <wikipediia.com> confusingly similar to WIKIPEDIA); America West Airlines v. Azra Khan, FA 140626 (Nat. Arb. Forum Feb. 21, 2003) (finding <americiawest.com> confusingly similar to AMERICA WEST). The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates a typographical variation of Complainant’s mark without authorization, and apparently its sole use has been for a website that displays pay-per-click advertising keyed to Complainant’s mark. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(ii) of the Policy, bad faith may be shown by evidence that the domain name was registered “in order to prevent the owner of the trademark or service mark from reflecting the mark in
a corresponding domain name, provided that [Respondent] ha[s] engaged in
a pattern of such conduct.” Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] 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 [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
The Panel considers the evidence presented by Complainant sufficient to demonstrate bad faith under each of these provisions. See Alaska Air Group, Inc. v. Mr Bolama / Bolama Technologies Ltd., FA 1560092 (Nat. Arb. Forum June 26, 2014) (finding bad faith under similar circumstances). The Panel finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bareminerials.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: September 24, 2014
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