TheUBeauty.com, LLC v. ivy li / ubeautylash
Claim Number: FA2208002009485
Complainant is TheUBeauty.com, LLC (“Complainant”), represented by Scott Hervey of Weintraub Tobin Chediak Coleman Grodin, California, USA. Respondent is ivy li / ubeautylash (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubeautylash.com>, registered with Tucows Domains 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 23, 2022; the Forum received payment on August 23, 2022.
On August 24, 2022, Tucows Domains Inc. confirmed by e-mail to the Forum that the <ubeautylash.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 2022 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@ubeautylash.com. Also on August 25, 2022, 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 23, 2022 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 states that it is a manufacturer of skin care products and claims rights in the U BEAUTY trademark relying its ownership of the trade mark registrations described below and its extensive use of the mark in its business including on the Internet.
Complainant alleges that the disputed domain name is confusingly similar to the U BEAUTY mark in which it has rights arguing that the addition of the word “lash” to the “ubeauty” element does not change the confusing nature of the disputed domain name. See Homer TLC, Inc. v. PT. Jasa Manajemen Progresip, FA1102001370544 (Forum Mar. 15, 2011) (holding that <depot-opinion.com> and <depotopinions.com> domain names are confusingly similar to complainant’s HOME DEPOT mark despite the fact that both domain names omit the term “Home.”).
Complainant adds that this is particularly true because the word “lash” is merely descriptive of the goods or services purportedly being offered. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end).
Furthermore, Complainant submits that removing spaces between terms, and appending the gTLD are similar inconsequential changes that do not affect the application of the Policy. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Moreover, Complainant argues that to show that a domain name is confusingly similar to a trademark for the purpose of the Policy, it is not essential that everybody be confused; the panel need only be satisfied that some people who find Respondent’s site may think that they have found a site that belongs to or is endorsed by the Complainant when no such relationship exists. See The State Bar of California v. eWebNaiton.com, Inc. FA97137 (Forum June 21, 2001).
Complainant asserts that it owns numerous similar domain names associated with operable websites that contain and/or begin with the term “ubeauty” and then contain an additional word representative of product offerings, such as <ubeautyblockchain.com> <ubeautyskin.co.uk>, <ubeautyskin.com>, and ubeautyskin.tw, and others. Here disputed domain name here similarly begins with “ubeauty” and then contains the generic term “lash”, presumably representative of the primary beauty care product offerings of eyelash products and accessories. See Xtreme Lashes, LLC v. Xtended Beauty, Inc. (5th Cir. 2009) 576 F.3d 221, 229 (finding the marks XTREME LASHES and XTENDED BEAUTY “are similar enough to suggest a common origin or association [and [e]ven if a person recognized that the marks are not identical, she might believe that XTENDED BEAUTY is a product line offered by the makers of XTREME”).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that the disputed domain name was registered no earlier than May 11, 2020 and potentially reconfigured as recently as April 27, 2022, whereas Complainant established its trademark rights in the U BEAUTY as early as December 31, 2018 and its design mark since May 2. 2019, respectively. These dates are significantly earlier than Respondent’s date of registration of the disputed domain name.
Additionally, Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. See Fiesta Palms, LLC v. The Palms Poker Room c/o Host Master, FA0506000495283 (Forum Aug. 11, 2005). (The registration of an infringing domain name that is confusingly similar to complainant’s mark in order to operate an online casino suggestive of a connection with complainant is not a bona fide offering of goods or services, or legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and (iii).)
A screen capture of the website to which the disputed domain name resolves, which has been exhibited in evidence in an annex to the Complaint, shows that Respondent is using the disputed domain name as the website address to sell and promote goods that compete with those offered by Complainant, and Complainant contends that such use not constitute a bona fide offering of goods under Section 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use under Section 4(c)(iii) of the Policy.
Furthermore, trademark law protects consumers from inferior goods by forcing businesses to claim responsibility for their products, and protects businesses by preventing others from taking advantage of their goodwill. See Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 873 (9th Cir. 1999). Complainant argues that the disputed domain name is being used to sell or advertise a product that tarnishes Complainant’s trademark and there is no evidence to justify the use of the specific domain name, it follows that Respondent does not have a legitimate interest.
Complainant adds that the facts in this case are similar to those in Fiesta Palms, LLC v. The Palms Poker Room c/o Host Master, FA0506000495283 (Forum Aug. 11, 2005), (finding that no legitimate interests existed in the domain name at issue that was confusingly similar to complainant’s mark in order to operate an online casino suggestive of a connection with complainant is not a bona fide offering of goods or services, or legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and (iii))
Complainant next alleges that the disputed domain name was registered and is being used in bad faith arguing that given Complainant’s ownership of a portfolio of registrations for the U BEAUTY mark and the notoriety of Complainant’s products in the beauty industry, Respondent had both actual or constructive knowledge of Complainant’s trademark rights, when it when it registered the disputed domain name. Complainant submits that the registration of the disputed domain name with such knowledge of Complainant’s rights is evidence of bad faith registration and use.
Complainant adds that Respondent’s use of the U BEAUTY mark in the disputed domain name is a misappropriation of the goodwill in the mark. In National Life Association v. FREVG.com, FA95837 (Forum Nov. 30, 2000), the panel found bad faith where the respondent registered the domain names <friendsofnra.com> <friendsofnra.net> and <friendsofnra.org> with the intention of using the domain names in connection with individual NRA fundraising events but without permission from the National Rifle Association.
Here, the disputed domain name and the U BEAUTY mark are confusingly similar and Internet users looking for Complainant’s products would likely believe there is an affiliation between Respondent and Complainant, and clearly, Respondent intended for such confused consumers to purchase beauty products from Respondent’s website for commercial gain. Complainant argues that such use of the disputed domain name by Respondent harms Complainant’s business.
Complainant adds that Respondent’s bad faith is further evidenced by its failure to include any type of a disclaimer on its website warning users that it is not affiliated with Complainant in any way, not that inclusion of a disclaimer would negate a finding of bad faith because a disclaimer could do “nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.” See Sony Kabushiki Kaisha TA Sony Corporation v. Stanley Pace, FA1111001415253 (Forum Dec. 15, 2011) (ordering the <sonyentertainment.com> domain name to be transferred from respondent to complainant) (quoting Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000).
Complainant contends that in fact, bad faith will still be found even where a respondent attempts to mitigate bad faith use by putting out a disclaimer and providing a link to the complainant’s website on the respondent’s website. Here, Respondent does not even pretend to dispel initial interest confusion).
Complainant adds that Respondent is clearly trying to pass itself off as being associated with Complainant which supports a finding of bad faith. See Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant manufactures and markets beauty product using the U BEAUTY mark for which it owns a portfolio of registrations including:
· United States of America registered trade mark U BEAUTY, registration number 6399246, registered on the Principal Register on June 29, 2021 for goods in international class 3;
· International registered trademark U BEAUTY, registration number 1580172, registered on January 22, 2021 for goods in class 3;
· Hong Kong registered trademark U BEAUTY, registration number 305134851, registered on December 6, 2019 for goods in class 3;
Complainant has also adduced in evidence copies of numerous trademark registrations for its design logo.
Complainant has an established Internet presence, owing a large portfolio of Internet domain name registrations including <ubeauty.com> and other marks which have “ubeauty” as their only distinctive element as detailed in the Complaint.
For example, Complainant’s Hong Kong trademark was registered on December 6, 2019 and the certificate of registration issued by the United States Patent and Trademarks Office (“USPTO”), states that the application for above registration number 6399246 for the U BEAUTY trademark which was registered on June 29, 2021, was filed on December 31, 2018, claiming first use in commerce on October 26, 2019.
The disputed domain name was registered on May 11, 2020 and resolves to a website purporting to offer eyelash beauty products at high discounts, many of which bear Complainant’s U BEAUTY brand.
There is no information available about Respondent, who has availed of a privacy service to conceal her identity on the published WhoIs, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name for the purposes of this proceeding. The Registrar has disclosed that Respondent is the registrant of the disputed domain name.
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 provided uncontested evidence to prove that on the balance of probabilities it has rights in the U BEAUTY mark, established by its ownership of its portfolio of trademark registrations described above; and in the annexes to the Complaint, it has provided evidence of use of the mark including online in its beauty products business.
The disputed domain name <ubeautylash.com> consists of Complainant’s mark in its entirety, in combination with the elements “lash”and the generic Top Level Domain (“gTLD”) extension <.com>.
Complainant’s U BEAUTY mark is the dominant and only distinctive element in the disputed domain name. The element “lash” is descriptive of eyelashes and has no distinguishing character.
The gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for a domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s mark.
This Panel finds therefore that the disputed domain name <ubeautylash.com> is confusingly similar to the U BEAUTY mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
The Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the disputed domain name arguing that
· Complainant established its trademark rights in the U BEAUTY as early as December 6, 2019 when the U BEAUTY mark was registered in Hong Kong, which predates the registration of the disputed domain name the disputed domain name was registered on May 11, 2020;
· Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services;
· the screen capture of the website to which the disputed domain name resolves, which has been exhibited in evidence in an annex to the Complaint, shows that Respondent is using the disputed domain name as the website address to sell and promote goods that compete with those offered by Complainant, which does not constitute a bona fide offering of goods or a legitimate noncommercial or fair use;
· as the disputed domain name is being used to sell or advertise a product that tarnishes Complainant’s trademark and there is no evidence to justify the use of the specific domain name, it follows that Respondent does not have a legitimate interest.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
While Complainant’s rights in the U BEAUTY mark are not long established, it has adduced uncontested evidence that its rights in the mark predate the registration of the disputed domain name. The word “beauty” is the major element of Complainant’s mark and is descriptive of the products it manufactures as well as the beauty industry in which it operates. However the combination of the elements in the disputed domain name, create a distinctive mark as evidenced by the fact that it was registered in numerous jurisdictions.
In a declaration submitted by the CEO of Complainant which is annexed to the Complaint, it is averred that while Complainant was founded only in 2018, it has since conducted over 65,000 transactions for over 65,000 customers across the world which generated USD$ 4 million in 2020, €7 million in 2021 and approximately USD 10 million in the first eight months of 2022. There is no evidence adduced to support these assertions, but this Panel accepts that Complainant has invested significantly in trademark registrations and domain names, and so has established a business and reputation in a short time.
While Complainant’s mark is simple, given that the disputed domain name includes the mark in its entirety, that Complainant’s mark is the dominant element of the disputed domain name, that Complainant owns a large international portfolio of trademarks for which applications were made prior to the registration of the disputed domain name, and its Hong Kong trademark was registered prior to the creation of the disputed domain name; that Respondent structured many of its Internet domain names similarly to the structure of the disputed domain name, namely the U BEAUTY mark followed by a descriptive word; and that Respondent has not adduced any explanation of why the disputed domain name was chosen and registered in such circumstances, on the balance of probabilities this Panel must find that on the balance of probabilities the registrant of the disputed domain name was aware of Complainant and that the disputed domain name registered in bad faith with Complainant’s mark in mind in order to create an association with Complainant and its U BEAUTY mark.
In an annex to the Complaint, Complainant has adduced in evidence screen captures of the website to which the disputed domain name resolves, these show that the disputed domain name is being used as the address of a website that purports to offer eye lash beauty products for sale at highly discounted prices.
The website contains images of the products which Respondent purports to offer as well as the packaging. The packaging clearly shows that the the products are being marketed under Complainant’s U BEAUTY mark. There is no suggestion that Respondent is a reseller of Complainant’s genuine products, and given the sizes of the discounts offered on the products purported to be offered on Respondent’s website, it is improbable that they are Complainant’s own branded products, but rather, as alleged, Respondent is taking advantage of Complainant’s goodwill and tarnishing Complainant’s mark.
Furthermore Respondent’s use of the disputed domain name as the address of a website which presents numerous products purporting to be Complainant’s goods, without any clarification that Respondent has no relationship with Complainant constitutes passing off which is evidence of bad faith use of the confusingly similar disputed domain name.
Such intentional use of the disputed domain name in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the products that she purports to offer on it, constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubeautylash.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: September 26, 2022
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