WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cult Beauty Limited v. WhoisGuard, Inc. / Sarah Shaiq
Case No. D2018-0866
1. The Parties
The Complainant is Cult Beauty Limited of Wells, Somerset, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Dechert LLP, United Kingdom.
The Respondent is WhoisGuard, Inc. of Panama, Panama / Sarah Shaiq of New York, New York, United States of America (“United States”).
2. The Domain Names and Registrar
The disputed domain names <cultbeauty.shop> and <cultbeauty.store> are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2018. On April 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 18, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 19, 2018 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 amended Complaint on April 24, 2018.
The Center verified that the Complaint together with the amended 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 April 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2018.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on May 22, 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
The Complainant is Cult Beauty Limited, an online retailer of beauty products based in the United Kingdom, and founded in 2007. It enjoys certain reputation amongst its consumers, is frequently referenced in global media and has received numerous awards for its beauty website. The Complainant is the owner of trade mark CULT BEAUTY registered in multiple jurisdictions including the United States, the United Kingdom and the European Union. United States trade mark CULT BEAUTY, Registration No. 4378248, was registered on August 6, 2013 in designated classes 4, 8, 9, 14, 18, 21, 25, 28, 35, 44 and 45. The Complainant also owns domain name <cultbeauty.co.uk> and uses it as its official website to offer beauty products and services.
The Respondent registered the disputed domain names <cultbeauty.shop> and <cultbeauty.store> on April 25, 2017. At the time of drafting this Decision, the disputed domain names resolved to parked pages with
pay-per-click (“PPC”) links.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to its trade mark CULT BEAUTY. The Complainant holds that the disputed domain names consist of the trade mark in its entirety, and that the suffixes “.shop” and “.store” are descriptive and non-distinctive words and reinforce the connection with the Complainant in the minds of consumers.
The Complainant further contends that the Respondent has no legitimate interest in the disputed domain names. The Complainant asserts that the disputed domain names were registered in April 2017, 10 years after the commencement of the Complainant’s business, and six years after the Complainant’s trade mark was first filed. No demonstrable preparations to use the disputed domain names have been made by the Respondent. There are no plausible reasons as to why the Respondent has selected the disputed domain names. Additionally, the Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trade mark.
The Complainant finally contends that the disputed domain names were registered and are being used in bad faith. The Complainant asserts that the Respondent registered the disputed domain names in order to unfairly benefit from the Complainant’s rights in its trade mark and divert Internet traffic from the Complainant thereby interfering with the Complainant’s business. The Respondent is currently holding the disputed domain names passively, which is further indication of bad faith registration and use of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has successfully established its rights over the trade mark CULT BEAUTY. The earliest registration date of the trade mark is August 6, 2013.
Apart from the generic Top-Level Domains (“gTLDs”) “.shop” and “.store”, the disputed domain names incorporate the Complainant’s distinctive trade mark CULT BEAUTY in its entirety. UDRP jurisprudence has established that incorporation of a complainant’s distinctive trade mark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the complainant’s trade mark. The gTLDs “.shop” and “.store” are viewed as a standard registration requirement and as such are disregarded under the first element confusing similarity test.
Therefore, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trade mark.
B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names, and the burden of production is hence shifted to the Respondent to rebut the Complainant’s contentions. In this case, the Respondent has failed to submit a response to rebut the Complainant’s prima facie case and the Panel may draw inferences from the absence of a response as it considers appropriate (see section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition).
Hence and taking into account the Panel’s findings below, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The Panel notes that the registration date of the Complainant’s CULT BEAUTY trade mark predates that of the disputed domain names. Given the reputation of the Complainant’s business, it is suggestive of the Respondent’s knowledge of the Complainant and its trade marks at the time of registration of the disputed domain names. The Respondent selected the disputed domain names by fully incorporating the Complainant’s mark. The registration of a domain name with knowledge of the complainant’s trade mark registration amounts to bad faith. See Herbalife International, Inc v. Surinder S. Farmaha, WIPO Case No. D2005-0765.
The Panel observed that the Respondent’s use of the disputed domain names is not in connection with a bona fide offering of goods or services. The disputed domain names are under domain parking service providing PPC links from which the Respondent would receive commercial gain. The Respondent’s lack of rights or legitimate interests in the disputed domain names, and the failure to respond to the Complaint in any form is indisputable. The Panel therefore holds that the Respondent is intentionally using the disputed domain names to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark as to source, sponsorship, affiliation, and endorsement of the disputed domain names.
Given the above, the Panel concludes that the Respondent has registered and is using the disputed domain names 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 names <cultbeauty.shop> and <cultbeauty.store> be transferred to the Complainant.
Jacob (Changjie) Chen
Date: June 7, 2018