Tarte, Inc. v. tartecosmetics / Ferrell LaVerne
Claim Number: FA2008001910272
Complainant is Tarte, Inc. (“Complainant”), represented by Airina Rodrigues of Brownstein Hyatt Farber Schreck, Colorado, USA. Respondent is tartecosmetics / Ferrell LaVerne (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tartebeauty.com>, registered with eNom, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 27, 2020; the Forum received payment on August 27, 2020.
On August 27, 2020, eNom, LLC confirmed by e-mail to the Forum that the <tartebeauty.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC 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 September 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 22, 2020 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@tartebeauty.com. Also on September 2, 2020, 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 September 26, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the TARTE trademark established through its ownership of its portfolio of trademark registrations described below and extensive use of the mark, including on the Internet, in its cosmetics and skincare business since 2000.
Complainant submits that the disputed domain name <tartebeauty.com> is confusingly similar to the TARTE trademark in which it has rights, arguing specifically that the disputed domain name is composed of Complainant’s TARTE trademark combined with the descriptive term “beauty” and the generic Top-Level Domain (“gTLD”) <.com> extension.
Complainant asserts that it uses its TARTE mark on “beauty” products which adds to the confusing similarity.
Complainant submits that it is well established that a domain name consisting of a well-known mark, combined with a descriptive term or phrase, is confusingly similar to the mark. See Gannett Co. v. Chan, WIPO Case No. D2004-0117.
Complainant adds that the gTLD suffix is completely without legal significance and argues that the disputed domain name’s use of the <.com> suffix does not materially distinguish it from Complainant’s TARTE mark.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent is not commonly known by the disputed domain name because Respondent is listed as “REDACTED FOR PRIVACY” on the published WhoIs.
Complainant adds that it did not give Respondent any authorization or permission to offer for sale or sell Complainant’s products.
Complainant states that the disputed domain name is presently inactive; but referring to screenshots of the website to which the disputed domain name has previously resolved, Complainant avers that it contained hundreds of copyright images of Complainant’s products. Complainant submits that Respondent has not been granted any right or license to republish these images and submits that this is not a legitimate use of the disputed domain name.
Complainant points to the prominent use of the words “Tarte Cosmetics” on Respondent’s website and notes that these words are identical to Complainant’s own domain name <tartecosmetics.com>.
Complainant also argues that Respondent’s use of the website to which the disputed domain name resolves to advertise, market, offer for sale, and sell products bearing the TARTE mark is likely to mislead consumers into believing that the disputed domain name originates with Complainant or is approved, sponsored, affiliated, associated with or supplied by Complainant, when it is not.
Complainant submits that such unauthorized use of the TARTE mark constitutes trademark infringement.
Complainant further submits that Respondent is using the disputed domain name to impersonate Complainant and divert Internet traffic intended for Complainant and avers that: -
· On May 27, 2020 Complainant’s authorized representative made a test purchase of two products through Respondent’s website.
· Complainant’s representative was charged USD$ 31.00 and USD$ 10.00 respectively for these products. Complainant’s retail prices of the products are USD€ 39.00 and USD€32.00 respectively.
· An order for one of these products was then placed by Respondent with Complainant on Complainant’s own website, using what Complainant alleges was a third party stolen credit card but directing that the product be dispatched to Complainant’s authorized representative who placed the order with Respondent. Complainant’s warehouse dispatched the order. Complainant’s representative has not received the second product nor received a refund for same.
· On June 1, 2020 an employee of Complainant also made a test purchase of a product through Respondent’s website. On June 2, 2020 Complainant received an e-commerce order the same product, with shipping instructions to send the order to Complainant’s employee. The order was paid by a third-party credit card. Complainant shipped the order.
Complainant alleges that the disputed domain name was registered and is being used in bad faith.
Complainant argues that it is inconceivable that Respondent registered the disputed domain name, which is identical to Complainant’s TARTE marks, for any reason other than to wrongfully divert Internet users seeking Complainant’s own websites. See Alamo Rent-A-Car Management, LP v. Yong Li, WIPO Case No. D2003-0535 (Aug. 22, 2003) (finding “it inconceivable that Respondent chose to include the word ‘alamo’” in its domain name without knowledge of Complainant’s rights, even where Complainant’s mark was not registered in Respondent’s home country).
Complainant adds that the disputed domain name is being passively held and has being used in bad faith to impersonate Complainant and divert Internet traffic intended for Complainant as described above. Complainant submits that this bad faith use of the disputed domain name is compounded by the use of stolen credit cards to perpetrate a fraud.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer of cosmetics and skincare products which it distinguishes by the TARTE trademark for which it is the owner of the following registrations:
· United States Registered Trademark TARTE, registration number 2,742,879, registered on the Principal Register on July 29, 2003, amended on November 5, 2013 for goods in international class 3;
· United States Registered Trademark TARTE, registration number 4,574,715, registered on the Principal Register on July 29, 2014 for goods in international classes 3, 18 and 35;
· United States Registered Trademark TARTE, registration number 5,459,356, registered on the Principal Register on May 1, 2018 for goods in international class 3;
· United States Registered Trademark TARTE, registration number 5,464,758, registered on the Principal Register on May 8, 2018 for goods in international classes 3, 18, and 35; and
· United States Registered Trademark TARTE, registration number 6,075,541, registered on the Principal Register on June 2020 for goods in international class 3.
Complainant has an established Internet presence and promotes its products using the TARTE mark inter alia on its website.
The disputed domain name was registered on March 26, 2020 and resolves to a website that purports to offer Complainant’s TARTE branded products for sale at highly discounted prices.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name. Respondent’s registered name was disclosed by the Registrar in response to said verification request.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has adduced clear and convincing, uncontested evidence of its rights in the TARTE trademark established through its ownership of its abovementioned portfolio of trademark registrations and its extensive use of the mark including on the Internet in its cosmetics and skincare business since 2000.
The disputed domain name consists of Complainant’s TARTE trademark in its entirety in combination with the word “beauty” and the generic top-level domain (“gTLD”) <.com> extension.
Complainant’s trademark is the initial and only distinctive element in the disputed domain name. The word “beauty” is descriptive and generic and in context references Complainant’s cosmetic and skincare products.
In the circumstances of the present case, as Complainant has rightly argued, the gTLD <.com> extension may be ignored for the purposes of comparison.
This Panel finds therefore that the disputed domain name is confusingly similar to the trademark TARTE in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, arguing:
· that Respondent is not commonly known by the disputed domain name;
· that Respondent is listed as “REDACTED FOR PRIVACY” on the published WhoIs;
· that Complainant has not given Respondent any authorization or permission to offer for sale or sell Complainant’s products;
· that the website to which the disputed domain name resolves is presently inactive but has previously displayed hundreds of copyright images of Complainant’s products without authorization;
· that this is not a legitimate use of the disputed domain name;
· that Respondent’s prominent use of the words “Tarte Cosmetics” on said website creates a confusion with Complainant’s website to which its <tartecosmetics.com> resolves;
· that Respondent’s use of said website to advertise, market, offer for sale, and sell products bearing the TARTE mark is likely to mislead consumers into believing that the disputed domain name originates with Complainant or is approved, sponsored, affiliated, associated with or supplied by Tarte, when it is not;
· that such unauthorized use of the TARTE mark constitutes trademark infringement;
· that Respondent is using the disputed domain name to impersonate Complainant and divert Internet traffic intended for Complainant;
· that Respondent has used a stolen credit card to perpetrate a fraud while misleading consumers into believing that they were dealing directly with Complainant.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name.
For completeness it should be added that the facts of this case, where there is a context of uncontested allegations of use of the disputed domain name and the website to which it resolves to perpetrate fraud and copyright infringement, brings the matter outside of the realm of possible good faith use by a bona fide reseller.
It should also be added that this Panel has not necessarily accepted that a reseller of products requires permission of the producer.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
TARTE is a distinctive trademark and it is implausible that the disputed domain name was chosen and registered for any reason other than to reference Complainant and its cosmetic and skincare, “beauty” products.
On the balance of probabilities, the disputed domain name was registered in bad faith in order to target and take predatory advantage of Complainant’s name, mark, reputation and goodwill.
In reaching this conclusion this Panel is further convinced by the fact that the website to which the disputed domain name has resolved presents and purports to offer Complainant’s products for sale.
Furthermore, the uncontested evidence of Complainant shows that the disputed domain name is being used in bad faith.
The disputed domain name has been used to impersonate Complainant. The website to which the disputed domain name resolves purports to offer Complainant’s products for sale. Neither use of the TARTE mark nor use of the disputed domain name has been authorized by Complainant, but nonetheless Respondent’s website intentionally creates a clear impression that it is owned by, has a connection with, or is endorsed by Complainant.
Respondent’s website does not disclose that Respondent has no formal relationship with Complainant, but Respondent apparently accepts orders from Internet users and places identical orders with Complainant. This creates the misleading impression that the Internet user is dealing directly with Complainant.
Respondent’s website goes further intentionally creating the impression that it is owned by or connected with Complainant by offering only Complainant’s products for sale and providing Respondent’s contact details on the website as “Tarte Beauty”, with an address in Texas, USA and a USA telephone number.
Taken together these factors prove on the balance of probabilities that the disputed domain name has been used in bad faith. The additional factors that Respondent has not denied Complainant’s allegations that it has used a stolen credit card to perpetrate a fraud through the website and that it has infringed Complainant’s copyright in hundreds of images on the website contribute to the strength of Complainant’s case. In this regard it is noteworthy that Respondent’s website displays a copyright legend “© 2020Tarte Cosmetics”.
The fact that Respondent appears to be passively holding the disputed domain name as of the date of the Complaint does not detract from this finding.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tartebeauty.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: September 26, 2020
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