WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bare Escentuals, Inc. v. Madison Domains, John Madison
Case No. D2011-2199
1. The Parties
The Complainant is Bare Escentuals, Inc. of San Francisco, California, United States of America (U.S.), represented by Cooley LLP, U.S.
The Respondent is Madison Domains, John Madison of San Francisco, California, U.S.
2. The Domain Name and Registrar
The disputed domain name <escentuals.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2011. On December 14, 2011, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On the same date, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on December 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2012.
The Center appointed William F. “Bill” Hamilton as the sole panelist in this matter on February 2, 2012. 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
The Complainant has sold of cosmetics, skincare and related products for more than 30 years. The Complainant owns a number of U.S. federal registrations for the trademark BARE ESCENTUALS. The first such registration is dated May 23, 1989 and recites a fist use date of 1978. Another Complainant's U.S. registration for BARE ESCENTUALS shows a first use in 1976. The Complainant also owns the <bareescentuals.com> domain name that was registered on December 12, 1996. The Complainant has owned a U.S. federal registration for the trademark ESCENTUAL since April 11, 2006.
The disputed domain name was (according to the public WhoIs data) created on February 9, 2000. The Registrar indicates the date of registration in its registration verification response as September 27, 2011.
5. Parties’ Contentions
The Complainant asserts that the trademark ESCENTUAL is a coined term, having no dictionary definition. The Complainant asserts that the term ESCENTUAL is a distinctive component of the trademark BARE ESCENTUALS. The Complainant asserts that the BARE ESCENTUALS mark has been in use by the Complainant since 1976 and became well-known in the U.S. and internationally prior to the turn of the century. The Complainant asserts the disputed domain name is confusingly similar to the BARE ESCENTUALS mark. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name that resolves to a website that generates competitive links related to the sale of cosmetics and skin care products. The Complainant asserts that the disputed domain was registered and is being used in bad faith for the purposes of generating click through revenues by confusing unsuspecting Internet users.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy articulates three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and to obtain relief. These elements are that:
i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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.
A. Identical or Confusingly Similar
ESCENTUAL is a distinctive component of the Complainant's BARE ESCENTUALS mark. The appropriation of part of a registered mark is sufficient to create a likelihood of confusion where, as in this case, the appropriated portion is a coined and distinctive term. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; Archer-Daniels-Midland Company v. Robyn Bodine (a.k.a. D.L.Tate, Donnie Tate), WIPO Case No. D2002-0482; Banque Saudi Fransi v. ABCIB, WIPO Case No. D2003-0656. The Panel finds that the disputed domain name is confusingly similar to the Complainant's registered BARE ESCENTUALS trademark.
B. Rights or Legitimate Interests
The Complaint asserts that there has never been a business relationship between the Complainant and the Respondent and the Complainant has never authorized or licensed the Respondent to use the Complainant's mark. The disputed domain name is being used for obvious commercial purposes and thus its use is not protected by any claim of non-commercial use. Lastly, it does not appear (and the Respondent has not asserted) any genuine business activity by the Respondent using the mark ESCENTUAL other than the business generated through the disputed domain name. The Complainant has presented a prima facie case demonstrating the Respondent's lack of rights or legitimate interests in the disputed domain name. The Respondent has not come forward to rebut the Complainant's showing. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. LEGO Juris A/S v. PrivacyProtect.org/ThaiSerVerOnLinE, Mr.Sagsan Phurahong, WIPO Case No. D2010-0711; Audi AG v. Dr. Alireza Fahimipour, WIPO Case No. DIR2006-0003.
C. Registered and Used in Bad Faith
At the time of registration of the disputed domain name, the Respondent was on constructive, if not actual, notice of the Complainant's BARE ESCENTUALS mark. The Complainant's BARE ESCENTUALS mark was registered with the U.S. Trademark Office and had been widely used by the Complainant for nearly 25 years. A simple Internet search by the Respondent at the time of registration of the disputed domain name would have disclosed the Complainant's use of the BARE ESCENTUALS mark. It is simply not plausible that the Respondent was unaware of the Complainant's BARE ESCENTUALS mark at the time of registration of the disputed domain name. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The fact that the Respondent chose to use in the disputed domain name the principal component of Complainant's coined and fanciful mark speaks directly to the Respondent's bad faith. Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja Kil, WIPO Case No. D2000-1409. It is inconceivable that the disputed domain name was chosen by happenstance to serve as a domain name for a website that features competitive cosmetic and skin care products and includes references to the Complainant's products. The term ESCENTUAL is not a word found in dictionaries, and the Respondent has not come forth with any explanation as to how the disputed domain name was chosen. Finally, Complainant contends that the Respondent has engaged in a pattern of registering domain names that incorporate confusingly similar variants of well-known marks, e.g. <laddyfootlocker.com>, <maestrocards.com>; <wikiepedia.com>. Such a prior pattern of registrations which the Respondent does not dispute and which appears to be borne out to some extend by prior cases such as Vattenfall AB v. John Madison, WIPO Case No. D2011-0443 is further evidence of bad faith registration and use in this case. Bayerische Motoren Werke AG v. Hong Hee Dong, WIPO Case No. D2011-0532. The Panel finds that the disputed domain name was registered and has been used in bad faith.
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 <escentuals.com> be transferred to the Complainant.
William F “Bill” Hamilton
Dated: February 16, 2012