Complainant is Dotcom Retail Limited, Beauty Bay Limited, United Kingdom, represented by Kuit Steinart Levy LLP, United Kingdom.
Respondent is Beauty Bay, Bahrain.
The disputed domain name <beautybaybh.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2020. On June 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 16, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on June 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2020. Respondent sent an email to the Center on June 18, 2020, stating: “Thank you for your email, regarding I don’t know what to do in this case, but any way if it is enough to cancel the domain ‘beautybaybh.com’ kindly let me know already the business still new.” Following that email Complainant requested to suspend the proceeding and the notification of suspension was sent on June 29, 2020. The proceedings was reinstituted on September 1, 2020.
Accordingly, the Center notified Respondent about the new response due date on September 10, 2020. The Center notified the Parties about the commencement of Panel appointment on September 11, 2020.
The Center appointed Robert A. Badgley as the sole panelist in this matter on September 18, 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.
Complainant Beauty Bay Limited is a subsidiary of Dotcom Retail Limited, and the latter firm owns the trademarks relative to Beauty Bay’s activities. The two will be referred to henceforth as “Complainant”. Since 2005, Complainant has sold beauty products worldwide under the trademark BEAUTY BAY. In 15 years, Complainant’s turnover has exceeded GBP 400 million, with its latest annual reported turnover figure at GBP 88 million. Since at least as early as October 2019, Complainant has been selling its products in Bahrain, Respondent’s country.
Complainant also operates a website at “www.beautybay.com”. Complainant’s website receives more than one million visitors per week. Complainant also has a social media presence, with 1.6 million Instagram followers and nearly 1.4 million Facebook followers.
Complainant holds several trademark registrations, including:
European Union trademark Reg. No. 008390205 for BEAUTY BAY, registered on January 12, 2010;
United Kingdom trademark Reg. No. 0003017945 for BEAUTYBAY.COM, registered on October 9, 2015; and
United States of America trademark Reg. No. 88205839 for BEAUTY BAY, registered on July 30, 2019.
The Domain Name was registered on March 22, 2020. The Domain Name resolves to a parking page, which states: “Coming soon – Something great is coming.”
After the Complaint was filed, it appears that the Parties discussed settlement, and on September 1, 2020, Respondent appears to have countersigned an agreement to transfer the Domain Name to Complainant. Apparently, however, there was an additional step required to consummate the deal, and Respondent did not take any further action toward settlement.
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel concludes that Complainant has rights in the mark BEAUTY BAY through registration and use demonstrated in the record. The Panel also finds that the Domain Name is confusingly similar to that mark. The Domain Name incorporates the BEAUTY BAY mark in its entirety and adds the letters “bh”, which appear to be associated with or suggestive of Bahrain. In any event, the mark is clearly recognizable within the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Complainant has confirmed, and Respondent has not disputed, that Respondent has no affiliation or relationship with Complainant, and that Complainant has not authorized Respondent to use its BEAUTY BAY mark, in a Domain Name or otherwise.
The Complaint in this proceeding was filed on June 12, 2020, and it appears that for more than two months the Parties were trying to settle the case. In any event, Respondent has had ample time to review the allegations in the Complaint, which the Panel finds plausible given Complainant’s demonstrated use of the BEAUTY BAY mark to sell products worldwide, including in Respondent’s country Bahrain, and articulate some legitimate reason why it registered the Domain Name. Respondent has not refuted Complainant’s allegations that Respondent was aware of Complainant’s mark at the time the Domain Name was registered, and that Respondent is seeking commercial gain (either by setting up a commercial website or selling the Domain Name to Complainant) by means of consumer confusion between the mark and the Domain Name.
Complainant has established Policy paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent registered and used the Domain Name in bad faith.
The Panel incorporates its finding in the previous section that Respondent, on this undisputed record, that Respondent more likely than not had Complainant’s BEAUTY BAY mark in mind when registering the Domain Name. The Panel further concludes, based on Respondent’s incipient website – “Coming soon – Something great is coming” – that Respondent was motivated by commercial gain, to be derived from the false impression that Respondent was somehow a Bahraini affiliate of Complainant, in violation of the above-quoted Policy paragraph 4(b)(iv).
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <beautybaybh.com> be transferred to Complainant.
Robert A. Badgley
Date: September 20, 2020
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