The Complainant is Dotcom Retail Limited, Beauty Bay Limited, United Kingdom, represented by Kuit Steinart Levy LLP, United Kingdom.
The Respondent is Contact Privacy Inc. Customer 0158825396, Canada / Rhonan Moore, Beauty Bay, United Kingdom.
The disputed domain name, <beautybayonline.com> (the “Domain Name”), is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2020. On October 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 19, 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 October 19, 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 October 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2020.
On November 9, 2020 the Respondent sent to the Center an email reading: “Hello there apologies for not responding to your email sooner. I am currently in the process of changing the domain name and business name - RM”. On November 11, 2020 in response to an email from the Center acknowledging receipt of the above and enquiring whether that email should be treated as the Respondent’s response and whether the Respondent would wish to explore settlement options with the Complainant, the Respondent replied as follows: “Yes My previous email can be used as confirmation [that my previous email was my complete Response]. I would like to discuss further with your self regarding a settlement as making such significant changes to my business will come at a cost to myself”.
On November 12, 2020 the Center contacted the parties enquiring as to whether or not the Complainant wished the Proceeding to be suspended for 30 days to accommodate settlement discussions. On November 17, 2020 the Complainant emailed the Center requesting suspension of the Proceeding for 30 days. On December 17, 2020 the Complainant emailed the Center requesting that the Proceeding be reinstituted. The Proceeding was duly reinstituted that day.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 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.
The Respondent used a privacy service when registering the Domain Name. The Respondent’s identity was disclosed by the Registrar in response to the Center’s registrar verification request. The Center’s invitation to the Complainant to amend the Complaint followed on from that disclosure. In response to that invitation the Complainant added the Respondent as an additional respondent to the Complaint. For the purposes of this decision the Panel treats the underlying registrant as the Respondent and all references herein to the “Respondent” are references to Rhonan Moore.
The Complaint has been filed in the names of two complainant companies, Dotcom Retail Limited and Beauty Bay Limited, the latter being a wholly owned subsidiary of the former and an exclusive licensee of the former’s trade mark registrations on which the Complaint is founded. Both companies have a specific common grievance against the Respondent. In the view of the Panel it is equitable and procedurally efficient to treat the Complainant companies as one. All references herein to the “Complainant” are references to them both, except where otherwise indicated.
The Complainant (Beauty Bay Limited) is a wholly owned subsidiary of the Complainant (Dotcom Retail Limited). It is an online retailer of beauty products which it markets under the BEAUTY BAY and BEAUTYBAY.COM trade marks. Those trade marks are protected by numerous trade mark registrations registered in the name of the Complainant (Dotcom Retail Limited) and the subject of exclusive licences in favour of the Complainant (Beauty Bay Limited). Among those registrations are:
United Kingdom Registration No. 2440955A BEAUTY BAY (words) registered on August 24, 2007 (application filed on December 8, 2006) in classes 3 and 6 for various goods and services relating to personal care products and fragrances.
United Kingdom Registration No. 2440955B BEAUTYBAY.COM (word) registered on August 24, 2007 (application filed on December 8, 2006) in classes 3 and 6 for various goods and services relating to fragrances and perfumery.
The Complainant operates an online shop connected to its <beautybay.com> domain name.
The Respondent registered or acquired the Domain Name on July 30, 2020. The Domain Name is connected to an online shop offering for sale ladies clothing and beauty products. The website features a logo comprising the name “Beauty Bay” and a red lips device and at the foot of the page a copyright notice reading: “Copyright ã 2020 Beauty Bay”.
The Complainant contends that the Domain Name is confusingly similar to its registered trade marks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith. The Complainant seeks transfer of the Domain Name.
The Respondent has not formally responded to the Complainant’s allegations. However, the Respondent’s correspondence with the Center, which is described in Section 3 above, indicates that (a) the Respondent wishes his email of November 9, 2020 to be taken as his Response; (b) he is in the process of “changing the domain name and business name”; and (c) he was hoping that the settlement negotiations would yield some form of recompense for making those changes.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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 Domain Name comprises the Complainant’s registered trade mark BEAUTY BAY (absent the space), the descriptive word, “online”, and the “.com” generic Top-Level-Domain (“gTLD”) identifier. It also incorporates the Complainant’s BEAUTYBAY.COM registered trade mark, albeit with the descriptive word, “online”, inserted between “beautybay” and the gTLD identifier.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The Complainant’s registered trade marks are readily recognizable in their entirety in the Domain Name. The Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has rights.
The Complainant contends that the Respondent selected his Beauty Bay business name and registered the Domain Name with knowledge of the Complainant and its business and with intent to divert traffic to the Respondent’s competing website for commercial gain, deceiving Internet users into believing that the Respondent’s website is a website of the Complainant. The Complainant contends that registration and use of the Domain Name for such a purpose cannot give rise to rights or legitimate interests in respect of the Domain Name under this element of the Policy.
The Complainant has produced evidence to show that the Complainant’s Beauty Bay brand of products had been on sale online for many years prior to the Respondent’s registration of the Domain Name and in quantities sufficient to support the Complainant’s claim to a substantial reputation and goodwill in respect of its Beauty Bay name and trade mark. The Panel is satisfied that the Complainant has made out a prima facie case under this element of the Policy; in other words, a case calling for an answer from the Respondent.
The Respondent has made no attempt to answer the Complainant’s contentions. All that he has done has been to say that he is in the process of changing the Domain Name and his business name and, in the context of a possible settlement negotiation, that he would like to discuss settlement “as making such significant changes to [his] business will come at a cost to [himself]”. The Panel interprets that to mean that as part of a settlement whereby he foregoes the Domain Name he would expect to be compensated for the cost to him of giving it up. He has made no attempt to explain why he selected the Domain Name in the first place.
The Panel concludes on the evidence that the Complainant’s contentions are well-founded and that from the outset the Respondent’s intention was to derive commercial gain on the back of the fame of the Complainant’s business by impersonating the Complainant. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Domain Name, featuring as it does no more than the Complainant’s BEAUTY BAY and BEAUTYBAY.COM registered trade marks in conjunction with the descriptive word “online” is likely, in the view of the Panel, to lead Internet users to believe that the Domain Name is a domain name of or authorized by the Complainant. The website identifies its operator as “Beauty Bay” and the products that are on offer appear to the Panel to be products within the categories of those marketed by the Complainant under its BEAUTY BAY and BEAUTYBAY.COM trade marks. It is likely in the view of the Panel that Internet users will view the website as a website of or authorized by the Complainant and will trade with the Respondent through the website in the mistaken belief that they are dealing with the Complainant or an authorized agent of the Complainant. They will be deceived and in the view of the Panel on the unchallenged evidence of the Complainant the deceit was intended by the Respondent.
Paragraph 4(b)(iv) of the Policy provides that a circumstance leading to a finding of bad faith registration and use under the Policy is where the Respondent has used the Domain Name intentionally to attract Internet users to the Respondent’s website for commercial gain “by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of [the] website …”.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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 Domain Name, <beautybayonline.com>, be transferred to the Complainant.
Date: December 20, 2020
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