WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Face Halo LLC v. Donald, Donald Chang LLC
Case No. D2020-1642
1. The Parties
Complainant is Face Halo LLC, United States of America (“United States”), represented by Wrays, Australia.
Respondent is Donald Chang LLC, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <face-halo.com> (“the Domain Name”) is registered with Hostinger, UAB (the ”Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2020. On June 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 26, 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 July 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 10, 2020.
The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on August 20, 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
Complainant is a company incorporated under the laws of the State of Delaware, United States.
Complainant is in the business of selling effective, non-toxic, environmentally friendly, and cost-efficient makeup removers using fibre technology, developed by Complainant’s founder, Lizzy Pike.
Complainant’s founder and internal marketing team first began the process of coining and developing the Face Halo Trade Name and Face Halo Trade Marks in about 2016 (“Complainant’s Mark”). The official launch date for Complainant’s products in Australia and the United States under Complainant’s Mark was May 23, 2017, and Complainant incorporated “Face Halo LLC” on October 20, 2017.
Complainant registered the domain name <facehalo.com> (“Complainant’s Domain Name”) on August 16, 2016 and has been using Complainant’s Domain Name as its primary website for its business since May 23, 2017.
Complainant has also registered and used numerous top-level and second-level domains incorporating Complainant’s Mark.
Complainant has secured and uses social media handles/identifiers on various social media platforms, each of which incorporates Complainant’s Mark or variants of it.
Complainant filed its first trade mark application for FACE HALO in the United States on February 1, 2017 which was registered on November 28, 2017, under trade mark no. 5347792, and it now has more than 70 pending and registered trade marks for or incorporating FACE HALO around the world, including in the Republic of Korea, where the original registrant of the Domain Name is based, as well as in Malaysia where Respondent is based.
According to the publicly available WhoIs, the Domain Name was registered on July 19, 2019, and it is currently inactive.
5. Parties’ Contentions
A. Complainant
Complainant submits that the background to Complainant and a Korean entity known as J&J Cosmetics (“J&J”), is relevant to this Complaint as it demonstrates why the current registrant and Respondent have no legitimate rights or interests in relation to the Domain Name; and have registered and are using the Domain Name in bad faith.
Background to Domain Name registration
The Domain Name was originally registered on July 19, 2019, by J&J, some three years after Complainant had registered Complainant’s Domain Name, and two and a half years since it filed its first trade mark application for FACE HALO on February 1, 2017.
Since Complainant first commenced preparing the Complaint in late 2019, registration of the Domain Name has been transferred from:
(a) J&J, the original registrant of the Domain Name, based in the Republic of Korea; to
(b) James Wang, with a similar Malaysian street address and phone details to, and the same email address as Respondent, on or about December 23, 2019; to
(c) Respondent, on or about February 21, 2020.
J&J (or parties associated with J&J) have sought to file and register various trade marks for or incorporating the FACE HALO mark without Complainant’s consent. Complainant has no prior business relationship with J&J and has only identified the existence of these trade mark applications and registrations recently. Complainant is in the process of seeking to oppose and/or expunge these applications/registrations in various proceedings around the world.
Further, J&J used the Domain Name to sell counterfeits of Complainant’s Face Halo product on the website resolving from the Domain Name (Infringing Website) in 2019. This activity is presently the subject of a complaint filed by Complainant with the Korean Fair Trade Commission on November 11, 2019 (KFTC Complaint).
Among other things, the Infringing Website originally contained reproductions of copyright materials taken from Complainant’s website, including text, images and the photograph and story of Complainant’s founder, Lizzy Pike.
The materials which infringe Complainant’s copyright were subsequently removed from the Infringing Website and, shortly thereafter, registration of the Domain Name was transferred from J&J to James Wang of Malaysia in December 2019, prior to being transferred again to Respondent in February 2020.
During the time that the Domain Name was registered in the name of James Wang, the Domain Name resolved to an error page hosted on the <sixshop.com> domain (Sixshop), a Korean language website promoting various fashion and cosmetics brands, registered in the name of “Sixsolution” and based in Seoul.
Since being registered in the name of Respondent, the Domain Name again resolves to a website containing images which closely resemble and misappropriate materials taken from Complainant’s website.
Complainant’s contentions
Complainant states that since it first launched Complainant’s Mark and Complainant’s Domain Name it has gained a strong global market presence and has become well known among consumers through its widespread global promotions, sales and social media.
The Domain Name was registered on February 21, 2020, more than three years after Complainant registered Complainant’s Domain Name and Complainant filed its first trade mark application for FACE HALO.
Complainant asserts that the Domain Name is identical or confusingly similar to Complainant’s Mark, with the only difference being the inclusion of a hyphen between the words “face” and “halo” in the Domain Name. In this regard the addition of a hyphen is clearly insufficient to differentiate the Domain Name from Complainant’s Mark.
Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name, as Respondent has never been authorised by Complainant to register a domain name incorporating Complainant’s Mark, and Respondent has adopted the Domain Name with knowledge of Complainant and the success of the FACE HALO brand in order to engage in non-legitimate and counterfeit commercial activities.
Complainant argues that Respondent must have been aware of Complainant at the time of registering the Domain Name and can only have registered the Domain Name in bad faith, for the purpose of interfering with Complainant’s rights and attempting to attract internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s website.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant asserts that it has been using Complainant’s Mark since in or about 2017, having coined the mark earlier in 2016. It alleges it has used Complainant’s Mark on a range of makeup removers, developed by Complainant’s founder, Lizzy Pike. Complainant relies on its first trade mark application in the United States of America on February 1, 2017, along with approximately 70 pending and registered trade marks for or incorporating FACE HALO around the world. Complainant does not identify the dates or countries in which these registrations and applications exist, nor differentiate between marks that have been applied for, as opposed to registered.
Even though Complaint is light on detail in terms of registration of Complainant’s Mark, Complainant does assert that products sold under Complainant’s Mark were launched in May 2017 and that the product has become a “global sensation” and is now distributed by Complainant all over the world.
Further, Complainant points out that the trade mark applications or registrations include those filed or registered in the Republic of Korea, where the original registrant of the Domain Name is based, as well as in Malaysia where Respondent is based.
In the absence of a response and any attempt to refute these allegations, the Panel is prepared to draw an inference that Complainant has adequate rights in Complainant’s Mark and that these rights predate Respondent’s dealing in the Domain Name.
Save for the addition of a hyphen the Domain Name comprises Complainant’s Mark in its entirety. It is confusingly similar to Complainant’s Mark. Accordingly, the Panel finds that:
a) Complainant has rights in respect of Complainant’s Mark; and
b) the Domain Name is confusingly similar to Complainant’s Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
In terms of whether Respondent has rights or legitimate interests in the Domain Name, Complainant alleges that Respondent and the Korean entity J&J Cosmetics, which entity appears to be associated in some way with Respondent or James Wang, has copied material from Complainant’s website. Further, Complainant alleges that the Domain Name resolves to a website offering products sold by reference to images/materials which resemble and appear to have been taken from Complainant’s website.
In the absence of any denial by Respondent, the Panel is inclined to accept that such images/materials have been used, without permission and that it is reasonable to infer that this is likely to create the mistaken impression that the Domain Name and/or Respondent is somehow connected to Complainant and/or Complainant’s Mark.
As Complainant points out, there is no evidence that Respondent is affiliated in any way with Complainant. Nor has Respondent been licensed, authorized, or permitted to register domain names incorporating Complainant’s Mark.
For the reasons set out above, the Panel finds that Respondent is using the Domain Name to attract Internet users to a website for commercial gain.
Based on the above, the Panel is therefore satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
Given Complainant’s use and/or registration of Complainant’s Mark, including what appears to be use and/or registration in the Republic of Korea and Malaysia, the Panel infers that Respondent knew of Complainant’s Mark when registering or acquiring the Domain Name. Further, the alleged use of the Domain Name to sell counterfeit product from the Infringing Website, the subject of the KFTC Complaint and the transfer of the Domain Name since late 2019 is not in and of itself determinative, but in the absence of any explanation it does point towards Respondent or its associates attempting to conceal their activities from external scrutiny.
Likewise, the allegation that the Infringing Website originally contained reproductions of copyright materials taken from Complainant’s website, including text, images and the photograph and story of Complainant’s founder, Lizzy Pike and that the Domain Name again resolves to a website containing images which closely resemble and misappropriate materials taken from Complainant’s website points in the same direction.
Taking into account the evidenced commercial use of the Domain Name provided by Complainant, the Panel finds that Respondent registered and/or acquired and is using the Domain Name to take bad faith advantage of Complainant’s interest in Complainant’s Mark.
The Panel thus finds that the third limb of the Policy has been met.
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 Domain Name <face-halo.com> be transferred to Complainant.
Clive L. Elliott Q.C.
Sole Panelist
Date: August 31, 2020
