WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dotcom Retail Ltd v. Jason Hadnot

Case No. D2017-2338

1. The Parties

The Complainant is Dotcom Retail Ltd of Manchester, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Kuit Steinart Levy LLP, United Kingdom.

The Respondent is Jason Hadnot of Xianyang, China.

2. The Domain Names and Registrar

The disputed domain names <beautybaay.com> and <beautybayy.com> are registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complainant filed the Complaint in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2017. On November 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 28, 2017, 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. On November 29, 2017, the Center sent an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant requested, supported by evidence and argument, that English be the language of the proceeding on December 1, 2017. The Respondent did not comment on the language of the proceeding by the specified due date.

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 in English and Japanese of the Complaint, and the proceedings commenced on December 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2017.

The Center appointed Haig Oghigian (the “Panel”) as the sole panelist in this matter on January 16, 2018. 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

As there is no submission from the Respondent, the facts are taken from the Complaint and generally accepted as true.

The Complainant, Dotcom Retail Ltd., is a limited liability company (number 2440955A). The Complainant is the proprietor of the following UK trademarks: UK0003017945 BEAUTYBAY.COM (date of entry in register, October 9, 2015); UK0002440955A BEAUTY BAY (date of entry in register, August 24, 2007); UK0002440955B BEAUTYBAY.COM (date of entry in register, August 24, 2007) (collectively, the “Marks”).

The Respondent is Jason Hadnot of Xianyang, China.

The disputed domain names are <beautybaay.com> and <beautybayy.com> (collectively, “Disputed Domain Names”), both with registered to the Respondent on December 12, 2016.

The Registrar avers that the Registrar’s Registration Agreement is in Japanese. However, the language of Registrar’s Registration Agreement is in fact bilingual, partially in Japanese and partially in English. The Japanese portion is referred to as a “special provisions” (tokusoku) and the English portion is entitled “Registrant Agreement”. The Japanese special provisions provide that the Registrant Agreement applies to the Respondent’s registration with the Registrar and that the Registrant Agreement supersedes the special provisions in the event of a conflict.

5. Parties’ Contentions

A. Complainant

The Complaint seeks the transfer of the Disputed Domain Names to the Complainant.

i. The Disputed Domain Names are Identical or Confusingly Similar to the Marks

The Complainant’s use of the Marks predates the registration at the IPO and dates back to August 2005. The Complainant uses the Marks in various online formats, such as its website “www.beautybay.com”; its Twitter profile @beautybay; its Instagram profile @beautybaycom; and its Facebook profile @BeautyBaycom. The Complainant has used the Marks for over a decade in trade and has established an international reputation.

The Disputed Domain Names and the Marks are phonetically identical and differ only by one redundant letter and are visually, orally, phonetically identical.

ii. The Respondent Has No Rights or Legitimate Interests In Respect to the Disputed Domain Names.

The Respondent does not use the Disputed Domain Names to perform any trading activity. Rather, it uses the Disputed Domain Names to attract and redirect Internet traffic to another domain name, <sea0932.com>, which is an adult content website featuring explicit pornography.

The Respondent does not hold any registered rights in any signs similar to the Marks.

3. The Disputed Domain Names were Registered and are Being Used in Bad Faith

The Complainant is an online retailer trading over a decade making use of the Mark. It has established an international reputation with its customers, competitors in the industry, and prospective companies who may wish to offer their goods for sale on the Complainant’s website.

The Complainant alleges that Respondent must have had some knowledge of the Marks due to the international reputation and therefore deliberately sought to register the Disputed Domain Names to disrupt the Complainant’s business and to cause confusion in the market. The Complainant further alleges that the extremely close similarity of the Disputed Domain Names to the Marks is clear evidence of bad faith. The Complainant also alleges that the association of the Complainant and <sea0932.com> containing explicit adult content will severely damage the Complainant’s reputation and may cause economic loss. The Complainant further alleges that the Respondent will take advantage of the Complainant’s 95% customer satisfaction rate and may adversely affect the Complainant’s ratings by providing below par service and goods.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

1. Language of the Proceedings

Paragraph 11(a) of the Rules gives the Panel discretion to decide the language of this proceeding:

“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The Complainant requested the proceedings to proceed in English. The Respondent did not object to this request. The Panel notes that the Respondent had ample opportunity to raise objections in relation to the language of the proceeding or make known its preference, but it did not provide any response in this regard.

Moreover, as discussed above in Section 4, although the Registrar has indicated that the Registration Agreement is written in Japanese, the Panel finds that the Registration Agreement is a bilingual document written in Japanese and English. Further the Panel finds that the substantive portion of the Registration Agreement is written entirely in English under the heading “Registrant Agreement”.

Additionally, when the Complainant contacted the Respondent before submitting its Complaint to the Center, the Respondent responded in entirely in English, stating “[w]e can transfer the domian [sic] to you with a transfer fee of $800.” Furthermore, there is no evidence that the Respondent is familiar with the Japanese language, while the Respondent appears to be familiar with the English language.

The Panel finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Japanese.

Accordingly, having taken into consideration and giving regard to the circumstances of the administrative proceeding, the Panel hereby finds that the proceedings shall continue in English.

2. Substantive Findings

Paragraph 4(a) of the Policy requires that the complainant prove each of the following elements:

(i) The respondent’s 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 domain name; and

(iii) The respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Disputed Domain Names are made up of minor misspellings of the Complainant’s registered and distinctive Marks and the generic Top-Level Domain (“gTLD”) “.com”.

Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that a domain name that consists of a misspelled trademark may satisfy the first element of paragraph 4(a) of the Policy:

“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.

This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. Under the second and third elements, panels will normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant.

Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers.”

The Panel finds that the Disputed Domain Names, which each insert a single redundant alphabet and which are otherwise identical to the Marks, is confusingly similar and therefore the first part of paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Section 2.1 of the WIPO Overview 3.0 provides in pertinent part:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names.

As the Respondent has not sought to assert any rights or legitimate interests in the Disputed Domain Names, nor can the Panel ascertain any such rights or legitimate interests from the content of the website under the Disputed Domain Names, the Panel finds the Respondent does not have rights or legitimate interests in the Disputed Domain Names.

The Panel finds that the second part of the paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.

In addition, as the Complainant contends, the Respondent uses the Disputed Domain Names to redirect traffic to an third party’s adult-content website. Such use is very likely to result in tarnishing the trademark and the Complainant. Section 3.12 of the WIPO Overview 3.0 provides:

“Noting that noncommercial fair use without intent to tarnish a complainant’s mark is a defense under the second element, using a domain name to tarnish a complainant's mark (e.g., by posting false or defamatory content, including for commercial purposes) may constitute evidence of a respondent's bad faith.”

Moreover, the Disputed Domain Names comprise the Complainant’s Marks with an additional letter “a” or “y.” In the Panel’s view the obvious inference is that this amounts to classic “typosquatting”, designed to take advantage of Internet users slightly misspelling the Complainant’s website address, and that the Respondent is most likely to have had the Complainant and its rights in the Marks in mind when it registered the Disputed Domain Names. The Panel considers that the registration of such a domain name and the use of the domain name to redirect Internet users to a third party website with adult content, no doubt with a view to commercial gain, amounts to paradigm bad faith registration and use for the purposes of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the Disputed Domain Names were registered and are being used in bad faith.

The Panel finds that the third part of the paragraph 4(a) of the Policy is therefore satisfied.

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 Disputed Domain Names, <beautybaay.com> and <beautybayy.com>, be transferred to the Complainant.

Haig Oghigian
Sole Panelist
Date: January 23, 2018