WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bare Escentuals, Inc. v. WWWEnterprise, Inc.
Case No. D2010-1425
1. The Parties
Complainant is Bare Escentuals, Inc. of San Francisco, California, United States of America, represented by Cooley LLP, United States of America.
Respondent is WWWEnterprise, Inc. of Bloomfield, New York, United States of America.
2. The Domain Names and Registrar
The disputed domain names <baremineralssale.com>, <baremineralsskincare.com>, <buymdformulations.com>, <mdformulations-direct.com>, <mdformulationsdirect.com>, <mdformulationssale.com> and <mdformulationsstore.com> (collectively the “Domain Names”) are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2010. On August 25, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Names. On August 26, 2010, GoDaddy.com, Inc. 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 27, 2010.
The Center appointed R. Eric Gaum as the sole panelist in this matter on October 6, 2010. 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
Bare Escentuals, Inc. (“Bare Escentuals”) has used the BAREMINERALS trademark since 1993 and has owned a United States trademark registration for the BAREMINERALS trademark since February 22, 2000. (United States Registration Nos. 2,321,607, 3,090,836, 3,337,302 and 3,377,240). Bare Escentuals has owned the <bareminerals.com> domain name since June 11, 2004.
Bare Escentuals’ wholly-owned subsidiary, MD Formulations, Inc., owns U.S. trademark registrations for the MD FORMULATIONS mark dating back to November 17, 1992. (United States Registration Nos. 1,733,914, 1,814,638 and 3,645,245). Bare Escentuals’ predecessor registered the <mdformulations.com> domain name on March 4, 1998.
The Domain Names at issue are currently registered to Respondent WWWEnterprise, Inc., a corporation domiciled in the state of New York. Respondent registered the Domain Names containing the BAREMINERALS trademark on February 12, 2008, and April 30, 2008. Respondent registered the Domain Names containing the MD FORMULATIONS trademark between November 5, 2007 and July 2, 2008.
5. Parties’ Contentions
Bare Escentuals has been a source of cosmetics, skincare, and related products for more than thirty years. It offers products under a number of brand names, including BAREMINERALS and MD FORMULATIONS. The company’s products are made available through over 300 privately owned Bare Escentuals boutiques, as well as department stores, spa and beauty centers, home shopping networks, and online.
Bare Escentuals, through its wholly-owned subsidiary Bare Escentuals Beauty, Inc., owns, uses, and has registered worldwide the trademark BAREMINERALS in connection with its cosmetic and skincare products. According to Complainant, the Bareminerals line of cosmetics produces hundreds of millions of dollars in revenue annually.
Bare Escentuals has used the BAREMINERALS trademark since 1993 and has owned a U.S. trademark registration for the BAREMINERALS trademark since February 22, 2000. Bare Escentuals has owned the <bareminerals.com> domain name since June 11, 2004, and has used the domain name to market its Bareminerals products.
Since 1989, Bare Escentuals and its predecessors have used the MD FORMULATIONS trademark for a line of cosmetic and skincare products that are specially formulated for use with sensitive skin. Bare Escentuals’ wholly-owned subsidiary, MD Formulations, Inc., owns U.S. trademark registrations for the MD FORMULATIONS mark dating back to November 17, 1992. Bare Escentuals’ predecessor registered the <mdformulations.com> domain name on March 4, 1998, and the domain name is currently used to promote Complainant’s skincare and cosmetic products.
The Domain Names at issue are currently registered to WWWEnterprise, Inc., a corporation domiciled in the state of New York. Respondent registered the Domain Names containing the BAREMINERALS trademark on February 12, 2008, and April 30, 2008, years after Bare Escentuals adopted and registered the BAREMINERALS trademark (1993 and 2000, respectively) and domain name (2004).
Respondent registered the Domain Names containing the MD FORMULATIONS trademark between November 5, 2007 and July 2, 2008, well after Bare Escentuals (or its predecessor-in-interest) adopted the MD FORMULATIONS mark (1990); first registered the MD FORMULATIONS mark with the USPTO (1992); and registered its <mdformulations.com> domain name (1998).
The Domain Names are being used to improperly generate revenue for Respondent by marketing Complainant’s products and/or the products of its competitors. The Domain Names containing the BAREMINERALS trademark resolve to webpages stating that the “website is no longer available.” Both sites feature advertisements, however, for websites offering skincare products marketed by Complainant and its competitors.
The Domain Names containing the MD FORMULATIONS trademark resolve to webpages featuring Bare Escentuals’ registered MD FORMULATIONS logo (without authorization) and offering Complainant’s MD Formulations products for sale. Advertisements for competing products, however, are featured throughout the website, and the links along the left side of the homepage resolve to listings of products marketed by Complainant’s competitors as well.
Respondent has also purchased Complainant’s MD FORMULATIONS mark as an advertising keyword to promote its infringing Domain Names. A Google search for “md formulations,” for example, brings up “sponsored listings” for certain of Respondent’s Domain Names containing the MD FORMULATIONS trademark.
Respondent’s Domain Names merely combine Complainant’s registered trademarks with descriptive or generic terms, such as “buy,” “direct,” “store,” and “sale.”
Respondent has been named in at least three prior UDRP domain name disputes, all of which resulted in the transfer of the subject domain names.
Respondent’s infringing activity appears to be widespread and far-reaching. A “reverse WhoIs” search for domain names registered to Respondent yielded nearly 2,000 domain names, many of which infringe the trademark rights of others (specifically in the skincare field). Many of these domain names resolve to websites similar to those affiliated with the Domain Names at issue in this dispute.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, a “Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, [the] Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) that the Domain Names registered by Respondent are identical or confusingly similar to a trademark or a service in which Complainant has rights;
(ii) that Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
In accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as are appropriate from Respondent’s failure to reply to Complainant’s assertions and evidence or to otherwise contest the Complaint. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (January 20, 2003). As a result of Respondent’s default, the Panel may even accept as true all of the reasonable allegations of the Complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000).
A. Identical or Confusingly Similar
Complainant has provided evidence of ownership of a number of United States trademark registrations for the BAREMINERALS trademark since February 22, 2000 (United States Registration Nos. 2,321,607, 3,090,836, 3,337,302 and 3,377,240) and the MD FORMULATIONS mark dating back to November 17, 1992. (United States Registration Nos. 1,733,914, 1,814,638 and 3,645,245). Based on the registered trademarks and Complainant’s continuous use of the marks, Complainant clearly has rights in the marks.
The Domain Names are confusingly similar to Complainant’s BAREMINERALS and MD FORMULATIONS marks because they incorporate those marks in their entirety, adding only generic terms such as “buy,” “store,” “direct,” or “sale.” The combined terms suggest that the Domain Names are associated with Complainant. eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307 (January 31, 2007); Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For sale, WIPO Case No. D2000-0662 (September 19, 2000).
By adopting Domain Names that wholly incorporate Complainant’s marks, and which convey the same overall visual impression as Complainant’s marks, Respondent has created marks confusingly similar to those marks and has attempted to capitalize on the valuable BAREMINERALS and MD FORMULATIONS trademarks. See, e.g., Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888 (January 6, 2004).
The Panel finds that the Domain Names are nearly identical and confusingly similar to the BAREMINERALS and MD FORMULATIONS trademarks, and that Complainant has established it has rights in the trademarks, pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent's rights or legitimate interests to the Domain Names for purposes of paragraph 4(a)(ii).
There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of any of the Domain Names. Presumably, Respondent would have provided a response to the Complaint had it had any rights or legitimate interests.
Furthermore, Respondent registered the Domain Names in 2007 and 2008, long after Complainant and its predecessors developed rights in the BAREMINERALS and MD FORMULATIONS marks and domain names. “Where a Respondent has constructive notice of a trademark, and yet registers a confusingly similar domain name thereto, the Respondent cannot be said to have a legitimate interest in the domain name.” Charles Schwab & Co., Inc. v. Josh Decker d/b/a I GOT YOUR TIX, WIPO Case No. D2005-0179 (April 20, 2005); accord Young Genius Software AB v. MWD, James Vargas, WIPO Case No. D2000-0591 (August 7, 2000).
The Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Names pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, which are set forth in paragraph 4(b) of the Policy, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location”.
Complainant and its predecessors have owned and used the BAREMINERALS and MD FORMULATIONS marks since the 1990s, and have owned registered rights in both marks for over ten years. Complainant also owns and uses the domain names consisting solely of those marks, and has done so since well before Respondent’s registration of the Domain Names. In the Panel’s view, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” Complainant’s trademarks at the time the Domain Names were registered in 2007 and 2008. Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).
Despite this knowledge, Respondent registered domain names that are confusingly similar to Complainant’s marks. Such conduct is evidence of bad faith registration and use. See, e.g., Fomento de Construcciones y Contratas, S.A. (FCC) v. Pedro Antonio Toledo Martinez, WIPO Case No. D2007-1751 (February 4, 2008) (registration of a domain name “identical to a very well-known company” that merely adds a “generic word [that] does not give any differentiation to domain names” was “undoubtedly in bad faith”); Bell South Intellectual Property Corp. v. Melos aka Thomas Stergios, WIPO Case No. DTV2001-0013 (September 16, 2001) (“[T]he use of Complainant’s entire mark creat[es] an absence of any plausible use of the Domain Name that would constitute good faith.”). Where a domain name is “so obviously connected with such a well-known name and products,” “its very use by someone with no connection with the products suggests opportunistic bad faith.” Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226 (May 17, 2000).
It also appears that Respondent is attempting to capitalize on the reputation of Complainant’s marks. Consumers searching for MD Formulations’ products, for example, could easily select one of Respondent’s sponsored web links and be redirected to Respondent’s online store instead, which features products offered by Complainant’s competitors. Respondent is not only depriving legitimate retail sources of business, but is likely diverting customers seeking Complainant’s products to third-party products instead. Respondent’s use of Complainant’s marks to apparently increase traffic to its websites for commercial gain also constitutes evidence of bad faith. See, e.g., PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162 (March 20, 2006) (“Respondent’s use of the Domain Name to earn referral fees by linking to other Websites attracts Internet users to Respondent’s site by creating confusion as to source and results in commercial gain to Respondent. Accordingly, the Panel finds that the Domain Name was registered in bad faith.”); accord Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (July 29, 2005).
Respondent’s apparent registration of nearly 2,000 domain names that are substantially identical to third party trademarks, combined with its prior lack of success in three proceedings under the Policy, is also further evidence that it registered and is using the Domain Names in bad faith. See eBay Inc. v. SGR Enterprises/Joyce Ayers, WIPO Case No. D2001-0259 (April 11, 2001) (“Ownership of numerous domain names that correspond to the names or marks of well known business entities suggests intent to profit from the activities of others. Respondents’ practice of registering domain names containing the trademarks of other companies . . . supports a finding that the contested domain names were registered and are [being] us[ed] in bad faith.”); see also Société BIC v. LaPorte Holdings, LLC, WIPO Case No. D2005-0342 (June 16, 2005).
Accordingly, the Panel finds that Complainant has established that Respondent registered and used the Domain Names in bad faith, pursuant to paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <baremineralssale.com>, <baremineralsskincare.com>, <buymdformulations.com>, <mdformulations-direct.com>, <mdformulationsdirect.com>, <mdformulationssale.com> and <mdformulationsstore.com> be transferred to Complainant.
R. Eric Gaum
Dated: October 20, 2010