WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beautyge Brands USA, Inc. v. Lee Tracey, Koan (UK) Ltd
Case No. D2016-1217
1. The Parties
The Complainant is Beautyge Brands USA, Inc. of San Diego, California, United States of America (“US”), represented by Gill Jennings & Every, United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent is Lee Tracey, Koan (UK) Ltd of Bristol, UK, internally-represented.
2. The Domain Name and Registrar
The disputed domain name <americancrewshop.com> is registered with Webfusion Ltd trading as 123‑reg (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2016. On June 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 21, 2016, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2016. The Response was filed with the Center on July 11, 2016.
The Center appointed Adam Taylor as the sole panelist in this matter on July 14, 2016. 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.
On July 29, 2016, the Panel issued Procedural Order No. 1 requesting further information / evidence from the Respondent within seven days and inviting the Complainant to respond thereto within seven days. The Respondent did not respond to the Panel’s request. The Complainant made a further submission on August 11, 2016.
4. Factual Background
The Complainant is part of the Revlon group of companies.
The Complainant owns numerous trade mark registrations worldwide for AMERICAN CREW including US trade mark No. 1904875, filed September 8, 1993 and registered on July 11, 1995, in class 3 and European Union trade mark No. 383448, with a priority date of September 6, 1996 and a registration date of May 10, 1999, in classes 3, 5, 8, 9, 11 and 21. The Complainant supplies men’s grooming products, including hair care preparations, hair styling preparations, shaving creams, gels and lotions under the AMERICAN CREW trade mark.
The Respondent, a distributor of the Complainant’s products, registered the disputed domain name on September 27, 2005.
The Complainant sent a cease and desist letter to the Respondent on November 4, 2015. Negotiations between the parties followed but no settlement was agreed.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
The disputed domain name is confusingly similar to the Complainant’s trade mark. It wholly incorporates the Complainant’s trade mark. The addition of the descriptive term “shop” does not distinguish the marks. It indicates to the public that the Respondent’s website is the Complainant’s official site or at least an affiliated or associated business.
The Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has no relationship with the Complainant and is not affiliated with it in any way. The Complainant has not authorised the Respondent to use its trade mark, or to register the disputed domain name.
The Respondent had at least constructive knowledge of the Complainant’s rights when it registered the disputed domain name, based on the extent of the Complainant’s trade mark applications and registrations as at the date of registration of the disputed domain name.
Given the distinctiveness of the Complainant’s trade mark, the Respondent can have no legitimate rights in the disputed domain name.
The Complainant has not been able to determine that the Respondent has been commonly known by the disputed domain name or that there has been legitimate noncommercial use of the disputed domain name or demonstrable preparations therefor.
The Respondent formerly used a poor quality version of the Complainant’s trade mark with a different font, which tarnished the Complainant’s trade mark and reputation.
There is no disclaimer on the Respondent’s website.
The disputed domain name was registered and used in bad faith.
Given the distinctiveness of the Complainant’s trade mark and the Respondent’s use of the disputed domain name, it is inconceivable that the Respondent registered the disputed domain name without being aware of the Complainant’s trade mark.
Previously the Respondent purchased the Complainant’s products from the Complainant’s former UK distributor. However, the Complainant never authorised registration of the disputed domain name by the Respondent. The Respondent has no permission from the Complainant to use any of the Complainant’s marks. The Complainant only became aware of the Respondent’s registration of the disputed domain name in 2015 following an Internet search.
The Respondent’s use of a domain name incorporating the Complainant’s trade mark for a website prominently displaying the Complainant’s trade mark will lead to a likelihood of confusion in accordance with paragraph 4(b)(iv) of the Policy.
The Respondent’s website goes further than merely suggesting a formal connection with the Complainant; it implies that the Complainant is the controlling mind behind the site.
The Respondent intends to redirect Internet traffic intended for the Complainant for its own purposes.
A summary of the Respondent’s contentions is as follows:
The Respondent began its relationship with American Crew products in 2004 via Icon, the main distributor in the UK.
The Respondent successfully sold American Crew and other brands on a different website “www.bathandunwind.com”. With authorisation and agreement from The Colomer Group, previous owners of the “American Crew” brand, the Respondent began selling American Crew products on a “dedicated brand site”. The disputed domain name was chosen and agreed by all parties. The Colomer Group raised no concerns about use of the trade mark within the domain name.
The Respondent enjoyed a long and successful relationship with both Icon and The Colomer Group for almost ten years, running “www.americancrewshop.com” with its guidance and support. The Respondent can prove a successful and collaborative trade.
Revlon bought The Colomer Group in 2013.
The first contact from Revlon came in the form of a letter in 2015. The Respondent responded as it had every intention of maintaining a good and mutually beneficial working relationship. There was agreement in principle but the Complainant sent the Respondent the final agreement. The Respondent consulted its solicitor, who advised it not to sign. Even though the Respondent would have been granted a licence to operate the site, the Complainant could have taken the disputed domain name and stopped the Respondent trading. The Complainant filed this proceeding following the Respondent’s refusal to sign the final agreement.
The disputed domain name does contain the trade mark but the previous owner of the trade mark did not raise any concerns about this when the disputed domain name was registered. The Respondent is selling genuine American Crew products at the recommended retail price. There is no conflict / misrepresentation and the Respondent has a very legitimate interest in the disputed domain name.
The Respondent does not falsely state that it is “American Crew”, the brand. The Respondent refers to itself as “American Crew Shop” and has done so since the disputed domain name was registered and the website created in 2005. This was “for branding purposes” as it reflected the name of the website. This issue was never raised as a concern by the previous owners. When the Complainant raised this concern, the Respondent suggested an alternative layout and wording on the site which it would have implemented as soon as the agreement was signed. The Complainant agreed to these changes in principle but provided a proposed agreement requiring transfer of ownership of the disputed domain name. Therefore, the Respondent never went ahead with the changes.
The Respondent has not cornered the market in all the domain names as the “www.americancrew.com” site is still live and unaffected. This ranks the highest in Google search rankings. Therefore, customers would go to that site first. However, nothing can be purchased on that website, so this may drive customers to choose the Respondent’s site next so they can purchase the products.
Following the Complainant’s letter, the Respondent updated its logo to the authorised version required by the Complainant. The Respondent also removed the delivery options outside the UK as requested by the Complainant.
When the disputed domain name was registered, the Respondent had no intention or interest in selling it to the trade mark owner.
The Respondent had no intention or interest in preventing the owner of the trade mark from reflecting the mark in a corresponding domain name, as the Complainant has always owned <americancrew.com>.
The Respondent has not disrupted business of a competitor because no products are sold on the Complainant’s website.
The Respondent has not attempted to attract Internet users for commercial gain by trying to confuse them. There is no opportunity to buy the products on the Complainant’s website “www.americancrew.com” and so customers who wanted to purchase products would leave that site looking for alternative places to buy. This could be from a number of different websites retailing American Crew products. The Colomer Group and Icon agreed to the registration and use of the disputed domain name, including the content and design of the website. They continually supported the Respondent with new launches, promotions, imagery and content.
The terms and conditions make clear that the site is operated by the Respondent, which is also mentioned in the footer. When customers communicate with the Respondent, it responds using its name.
The Respondent has in principle agreed a new design with the Complainant, which addresses the Complainant’s concerns around the likelihood of confusion. The Respondent has made it very clear that it would be happy to implement this design.
The Complainant’s intention is to remove the disputed domain name from the Respondent at all costs. The Respondent wants to find a way to work with the Complainant that is mutually beneficial and represents the brand in the right way. But the Respondent will not be forced into signing an agreement that leaves the Respondent exposed and without protection.
The Respondent has operated the disputed domain name in good faith for the entire period of its use as a website and aims to continue to do so.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns registered trade marks for AMERICAN CREW.
Paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name.
Here, the Complainant’s distinctive trade mark is undoubtedly the dominant component of the disputed domain name and the addition of the descriptive term “shop” is insufficient to avert a finding of confusing similarity.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
As to paragraph 4(c)(i) of the Policy, the Respondent is reselling the Complainant’s own goods. The consensus view of UDRP panels – as expressed in paragraph 2.3 of WIPO Overview 2.0 – is that to establish a bona fide offering of goods or services in such circumstances, the Respondent must comply with certain requirements:
“These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorised but also unauthorised resellers may fall within such Oki Data principles.”
In the Panel’s view, there has been no such prominent disclosure in this case; on the contrary, the Respondent’s website looked like an official site of the Complainant. The home page was dominated by a version of the Complainant’s logo. The Respondent was identified as the site operator only at the end of the terms and conditions, a far from prominent location.
Accordingly, the Panel considers that the Respondent’s use of the disputed domain name cannot be said to be bona fide.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In the Panel’s view, the Respondent’s use of the disputed domain name, which closely reflects the Complainant’s trade mark, for a website which effectively impersonated the Complainant, as explained above, constituted use in bad faith. However, the Complainant must also establish that the disputed domain name was registered in bad faith.
The Respondent claims that the Complainant’s UK distributor, Icon, and the Complainant and/or its previous owner The Colomer Group, specifically authorised the Respondent to register the disputed domain name and that no concerns were ever raised about the Respondent’s use of the Complainant’s trade mark until the Complainant’s 2015 letter, which followed Revlon’s acquisition of the Complainant. The Respondent asserts that it had a successful 10-year collaboration with Icon and The Colomer Group, which allegedly included their providing the Complainant with guidance and support in running the website at the disputed domain name.
If the Respondent’s submissions are correct, then the Respondent would undoubtedly have registered the disputed domain name in good faith and the Complaint must fail.
However, the Respondent filed no evidence in support of its assertions. And, while the Complainant admits that the Respondent previously bought goods from the Complainant’s former UK distributor, the Complainant strongly asserts that it never authorised the Respondent to register the disputed domain name and, indeed, that the Complainant only became aware of the disputed domain name following an Internet search in 2015.
In the circumstances, the Panel decided to issue Procedural Order No.1, requesting that the Respondent explain in detail the circumstances in which the Complainant, the Complainant’s former owner and/or its former UK distributor allegedly authorised the Respondent to register the disputed domain name and to supply evidence supporting its assertions. The Complainant was given an opportunity to respond.
The Respondent did not reply to the Panel’s request.
In its further submission, the Complainant observed: “The Respondent has produced […] no contract, no license agreement, no email, no affidavits from witnesses, no references to the names of any specific individuals from the brand owner who allegedly provided ‘authorisation,’ no dates or places of any alleged business meetings or discussions with the Complainant or its former parent company (The Colomer Group) – absolutely nothing”. The Panel agrees and adds that, notwithstanding the Respondent’s claim of a
long-standing collaboration in connection with its website, the Respondent has not taken the opportunity to provide a single item of correspondence or other evidence showing that the Complainant or The Colomer Group were aware of the existence of the disputed domain name and/or associated website.
Therefore, based on the evidence before it, the Panel rejects the Respondent’s unsupported claims and concludes that the Respondent registered the disputed domain name in bad faith, with a view to using it in the manner described above.
The Complainant has therefore established the third element of paragraph 4(a) 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 <americancrewshop.com> be transferred to the Complainant.
Date: August 17, 2016