WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Charlotte Tilbury TM Limited v. Domains By Proxy, LLC / Qiangdong Liu, 365rw.com.ltd

Case No. D2020-0408

1. The Parties

The Complainant is Charlotte Tilbury TM Limited, United Kingdom, represented by Lane IP Limited, United Kingdom.

The Respondent is Domains By Proxy, LLC, United States of America / Qiangdong Liu, 365rw.com.ltd, China.

2. The Domain Name and Registrar

The disputed domain name <charlottetilburychina.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2020. On February 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 21, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 25, 2020.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy” or ”UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the ”Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2020.

The Center appointed Tobias Malte Müller as the sole panelist in this matter on April 14, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant’s group operates a global skincare and beauty business under the brand CHARLOTTE TILBURY and has its official website at “www.charlottetilbury.com/”. The business was founded in 2013 by Charlotte Tilbury, a makeup artist. Its products are stored in 35 stores in the United Kingdom, over 300 stores in the United States of America and available in stores or online in further countries around the world including China.

According to the Registrar’s verification response, the Respondent registered the disputed domain name on August 14, 2019. The language of the registration agreement at the time of registration was English.

The Complaint is based amongst others on the following word trademarks, applied for on or before the date of registration of the disputed domain name and consisting of the terms CHARLOTTE TILBURY, e.g. European Union Trade Mark No. 004003034 (registered on November 4, 2005, for goods and services in classes 3, 14, 16, 18, 21, 24, 44) and Chinese Trademark No. G1166743 (application date July 20, 2013, registered for goods and services in classes 3, 14, 16, 18, 21, 24, 27, 44).

It results from the undisputed evidence provided by the Complainant that the disputed domain name currently resolves to a website which features at its head the CHARLOTTE TILBURY trademark. The text on that website translates in English as “Charlotte Tilbury online store official website, to provide you with a full range of Charlotte Tilbury counter products online ordering service”.

5. Parties’ Contentions

A. Complainant

Firstly, the Complainant points out that the disputed domain name is identical or confusingly similar to the registered mark in which the Complainant has rights. The disputed domain name incorporates, in its entirety, the Complainant’s mark CHARLOTTE TILBURY, with the mere addition of the word ”China” and the generic Top-Level Domain (“gTLD”) ”.com” which is not distinctive.

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Respondent does not own any registered rights in any trademarks, which comprise part or the entirety of the disputed domain name. Furthermore, the Complainant has not authorized the Respondent to use the CHARLOTTE TILBURY trademarks as part of the disputed domain name and the Respondent is not commonly known under the disputed domain name either. The use by the Respondent of the Complainant’s CHARLOTTE TILBURY trademarks in the disputed domain name in combination with its use of the domain to resolve to a website which i) uses the CHARLOTTE TILBURY mark at the head of the homepage, ii) under the untrue and misleading statement that the website is a “Charlotte Tilbury online official website” and iii) is concerned with selling a wide range of Charlotte Tilbury Beauty’s CHARLOTTE TILBURY-branded products is bound to cause confusion and lead consumers to believe that the Respondent is affiliated with, sponsored by or licensed by the Complainant.

Thirdly, the Respondent’s registration and use of the disputed domain name constitutes – in the Complainant’s view – bad faith in particular, because by using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. Since the disputed domain name is used for a website which is headed with the Complainant’s trademark and which is concerned with selling the Complainant’s products, the Respondent was well aware of the Complainant and its trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Complainant is the owner of several trademark registrations consisting of the verbal elements CHARLOTTE TILBURY, e.g. European Union Trade Mark No. 004003034 (registered on November 4, 2005, for goods and services in classes 3, 14, 16, 18, 21, 24, 44) and Chinese Trademark No. G1166743 (application date July 20, 2013, registered for goods and services in classes 3, 14, 16, 18, 21, 24, 27, 44).

Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt, WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademark CHARLOTTE TILBURY is fully included in the disputed domain name.

Furthermore, and according to UDRP panel consensus, the applicable gTLD “.com” in the disputed domain name is to be disregarded under the confusing similarity/identity test.

Finally, it is the view of this Panel that the combination of the trademark CHARLOTTE TILBURY with the term “China” does not avoid the confusing similarity between the disputed domain name and the Complainant’s trademarks. In fact, it is nothing but the indication of the country where the Respondent is located. Numerous UDRP panels have found that the addition of such geographical terms to a distinctive trademark does not prevent a finding of confusing similarity (see, Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Wallin Fransson, WIPO Case No. D2018-0214; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 1.8).

In the light of the above, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to a disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.

First, it results from the Complainant’s uncontested evidence that the disputed domain name resolves to a website which features at its head the CHARLOTTE TILBURY trademark. Furthermore, this website claims to be the “Charlotte Tilbury online store official website”, while the Complainant has not given any authorisation for such use and is not linked to the Respondent or this website. In this Panel’s view, such use cannot be qualified as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy, since such use rather capitalizes on the reputation and goodwill of the Complainant’s trademarks and is therefore likely to mislead Internet users (cf. WIPO Overview 3.0 at section 2.9). In addition, the Respondent did not submit any evidence of bona fide pre-Complaint preparations to use the disputed domain name. In particular, the Complainant’s uncontested allegations demonstrate that it has not authorized the Respondent’s use of the CHARLOTTE TILBURY trademarks for registering the disputed domain name, which are confusingly similar.

Furthermore, the Panel notes that there is no evidence in the record or WhoIs information showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.

Finally, the Panel notes that there is no evidence in the record either showing that the Respondent might be making a noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. In particular, the Panel is satisfied that the registered trademarks CHARLOTTE TILBURY are distinctive so that it is unlikely that the Respondent wanted to fairly use the disputed domain name consisting of this trademark. In addition, the disputed domain name is used for a commercial website, so a noncommercial use is excluded from the outset.

It is acknowledged that once the Panel finds a prima facie case has been established, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).

It is the view of this Panel that these circumstances are met in the case at hand:

It results from the Complainant’s documented allegations that the disputed domain name is connected to a website which features at its head the CHARLOTTE TILBURY trademark. Furthermore, this website claims to be the “Charlotte Tilbury online store official website”, while the Complainant has not given any authorisation for such use and is not linked to the Respondent or this website. For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s trademarks and products. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain name included the Complainant’s trademark entirely when it registered the disputed domain name. Registration of a domain name which contains a third party’s trademark, in awareness of said trademark and in the absence of rights or legitimate interests is suggestive of registration in bad faith (see e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College forPhD Studies, WIPO Case No. D2015-0812; The Chancellor, Masters and Scholars of the University ofOxford v. Almutasem Alshaikhissa, WIPO Case No. D2014-2100; and Deutsche Lufthansa AG v. MustermannMax, Muster AG, WIPO Case No. D2015-1320).

The finding of bad faith registration and use is supported by the following further circumstances resulting from the case at hand:

(i) the Respondent’s failure to submit a response,
(ii) the Respondent’s failure to provide any evidence of actual or contemplated good-faith use,
(iii) the implausibility of any good faith use to which the disputed domain name may be put, and
(iv) the Respondent concealing its identity behind a privacy shield.

In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <charlottetilburychina.com> be transferred to the Complainant.

Tobias Malte Müller
Sole Panelist
Date: April 28, 2020