The Complainants are Dotcom Retail Limited, United Kingdom / Beauty Bay Limited, United Kingdom, represented by Kuit Steinart Levy LLP, United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Mariia Honta, United States of America.
The disputed domain name <beautybayusa.com> (the “Disputed 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 19, 2020. On June 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 22, 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 Complainants on June 22, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on June 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 July 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2020.
The Center appointed John Swinson as the sole panelist in this matter on August 4, 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.
The Complainants are Dotcom Retail Limited and Beauty Bay Limited. Beauty Bay Limited, a wholly owned subsidiary of Dotcom Retail Limited, is an online retailer of beauty products which can be purchased by customers worldwide. These products have been available for purchase from the Complainants’ website at <beautybay.com> since 2005. According to the Complaint, the Complainants have generated an aggregate turnover in that time exceeding GBP 400 million.
Dotcom Retail Limited is the owner of a number of registered trade marks incorporating “Beauty Bay”, the earliest of which is United Kingdom registered trade mark number UK0002440955A for BEAUTYBAY, registered on August 24, 2007 (“the Trade Mark”). Dotcom Retail Limited licences the Trade Mark to Beauty Bay Limited on an exclusive basis.
The Respondent is Mariia Honta, an individual of the United States. No response was received from the Respondent and therefore little information is known about the Respondent.
The Disputed Domain Name was registered on January 31, 2020. The Disputed Domain Name resolves to a website that prominently features branding for “Lash & Brows” (including the “[email protected]” email address), which appears to be a beauty parlor, and offers various beauty-related services at a location in Florida, United States.
The Complainants make the following contentions.
Identical or Confusingly Similar
The Disputed Domain Name incorporates the entirety of the Trade Mark with the addition of the term “USA”. As the Respondent is based in the United States, the letters “USA” are simply a geographic designation which does not sufficiently distinguish the Disputed Domain Name from the Trade Mark. Instead, it is likely to lead the public to believe the Disputed Domain Name is endorsed or sponsored by the Complainants.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:
- The predominant branding on the webpages at the Disputed Domain Name is “Lash & Brows”, with only one reference to “Beauty Bay”. It is apparent that the advertising and offer of beauty services are being made by a business known as “Lash & Brows LLC”.
- The Respondent has chosen to generate trade using the Disputed Domain Name, rather than a domain name featuring the actual business name of “Lash & Brows”. It may be doing so to increase its website rankings without substantial investment and by taking advantage of the search engine optimization and goodwill built up by the Complainants through significant time, effort, and expense.
- The Disputed Domain Name is identical to the Trade Mark, apart from the addition of a geographic term which falsely suggests endorsement by or affiliation with the Complainants. No disclaimers or statements are available at the Disputed Domain Name to disassociate it from the Complainants.
Registered and Used in Bad Faith
The Respondent is effectively unknown and used a proxy service to keep its personal identify private, which is a preliminary indication of a bad faith registration and use of the Disputed Domain Name.
The website at the Disputed Domain Name offers beauty and cosmetic services similar to those for which the Trade Mark is registered. There is therefore a high likelihood of confusion on the part of the public.
It appears that the services offered via the Disputed Domain Name were originally offered under the domain name <lash-brows.com>. This is consistent with name of the business that operates the Disputed Domain Name actually being “Lash & Brows”. The Respondent has therefore sought to use the Disputed Domain Name to take unfair advantage of the Complainants’ Trade Marks and reputation, of which it is inconceivable that the Respondent would not be aware.
The Respondent did not reply to the Complainants’ contentions.
To succeed, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have 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 onus of proving these elements remains on the Complainants even though the Respondent has not filed a response.
The Complaint is made on behalf of two Complainants.
Previous panels have permitted a single complaint where the complainants have a “common grievance” against the respondent, if it is equitable and procedurally efficient to do so.
Under paragraph 10(e) of the Rules, the Panel finds that it is equitable and procedurally efficient to consider the issues in the single Complaint given the Complainants are clearly related entities and share a common grievance against the Respondent (see section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel accepts that Dotcom Retail Limited and Beauty Bay Limited have common legal interests in the Trade Mark, as the owner/licensor, and as the licensee of the Trade Mark, respectively. As such, the Panel permits both parties to be joint Complainants in this dispute.
Failure to file a response
The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainants (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.
Paragraph 4(a)(i) of the Policy provides that the Complainants must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name incorporates the entirety of the Trade Mark, with the geographical term “USA” as the only additional term. A domain name which incorporates a registered trade mark only with the addition of a geographical term is considered by panels to be confusingly similar to the relevant trade mark for the purposes of the first element (see section 1.8, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Top Level Domain “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see section 1.11.1 of WIPO Overview 3.0).
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark.
The Complainants are successful on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainants must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainants are required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainants have made out a prima facie case. This finding is based on the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. It is clear from the content on the webpages at the Disputed Domain Name that the Respondent is in fact operating a business under the name “Lash & Brows” and is only using the Disputed Domain Name to generate traffic based on the reputation of, and potentially an implied affiliation with, the Complainants and its Trade Mark.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or has registered or common law trade mark rights in relation to this name.
- The Complainants have not authorized or otherwise given the Respondent permission to use the Disputed Domain Name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain.
The Respondent had the opportunity to demonstrate their rights or legitimate interests, but did not do so. In the absence of a response from the Respondent, the prima facie case established by the Complainants has not been rebutted.
In light of the above, the Complainants are successful on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainants must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainants have been offering beauty products for sale under the Trade Mark and at the domain name <beautybay.com> since 2005. According to the Complaint, the Complainants have built up a considerable reputation and goodwill in the Trade Mark and the name “Beauty Bay” is used across its marketing platforms and material (including social media), as well as on its own-branded cosmetics and beauty products.
The Complainants registration of the Trade Mark predates the registration of the Disputed Domain Name by 15 years. The Panel accepts the Complainants’ submission that the Complainants have a strong reputation and are sufficiently well-known throughout the world in the field of beauty services.
Previous panels have found that where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the Disputed Domain Name, the likelihood of confusion is such that bad faith may be inferred (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 and cases cited therein). The Disputed Domain Name incorporates the Trade Mark in its entirety (with the only addition being a geographic term). In addition, the Respondent and the Complainants both operate in the beauty industry.
These factors render it highly unlikely that the Respondent was not aware of the Trade Mark when it registered the Disputed Domain Name.
Given the high similarity between the Trade Mark and the Disputed Domain Name, and the similarity in services offered, the Panel considers that the Respondent is intentionally attempting to attract users to its website for commercial gain by creating a likelihood of confusion with the Trade Mark, which is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
In light of the above, and in the absence of a response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainants are successful on the third element of the Policy.
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 <beautybayusa.com> be transferred to the Complainants.
Date: August 18, 2020
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