WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BeSweet Creations LLC v. Yaracey Nunez Mayares
Case No. D2019-0261
1. The Parties
The Complainant is BeSweet Creations LLC of Oakland Park, Florida, United States of America, represented by CMS Cameron McKenna Nabarro Olswang LLP, United Kingdom.
The Respondent is Yaracey Nunez Mayares of Mexico City, Mexico.
2. The Domain Name and Registrar
The Disputed Domain Name <sugarbearhair.net> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2019. On February 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 1, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 5, 2019 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 February 5, 2019.
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 February 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2019.
On February 6, 2019, the Center received two informal communications in Spanish from the Respondent. On February 7, 2019, the Center sent a possible settlement communication to the Parties. The Center received two other informal communications from the Respondent on February 7 and 11, 2019. The Complainant requested the suspension of the proceedings on February 12, 2019. The proceedings were suspended as of February 12, 2019 until March 14, 2019. After several email communications received from the Complainant and the Respondent, the Complainant requested the reinstitution of the proceedings on March 6, 2019. The Center reinstituted the proceedings on March 7, 2019 noting that before the suspension took place, there were 14 days remaining for the Response due date, and accordingly the new due date for the Respondent to submit a Response was March 21, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on March 22, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 1, 2019. 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 the owner of the health gummy vitamin brand SUGAR BEAR HAIR.
The Complainant’s product was first launched in November 2015.
In addition, the Complainant offers two types of gummy vitamins, as well as various other beauty products, such as brushes, travel sets, and make-up bags.
The Complainant is the owner of numerous registrations throughout the world for the trademark SUGARBEARHAIR and SUGARBEAR including, among others:
- European Union Trade Mark SUGARBEARHAIR, Reg. No. 015466691, registered on November 23, 2016;
- United States of America trademark SUGARBEARHAIR, Reg. No. 4985290, registered on June 21, 2016; and
- Mexican trademark SUGARBEARHAIR, Reg. No. 1832022, registered on December 8, 2017.
The Disputed Domain Name <sugarbearhair.net> was registered on January 16, 2018.
The Disputed Domain Name is currently inactive. However, the Complainant presented evidence where the Disputed Doman Name resolved to a website with the look and feel of the Complainant’s website.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant states that the Disputed Domain Name is identical to its domain name without taking into account the generic Top-Level Domain (“gTLD”) identifiers.
Rights or legitimate interests
The Complainant alleges that the Respondent has no rights to, or legitimate interest in, the Disputed Domain Name. In addition, the Respondent is in no way related to, or authorized by the Complainant.
Furthermore, the Complainant states that the Respondent has registered the Disputed Domain Name in an attempt to appear authorized by, or connected to, commercial dealings of the Complainant.
The Respondent is not commonly known by the Complainant’s trademarks, nor has the Respondent used the Disputed Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Moreover, the Respondent is not affiliated with the Complainant in any way nor is an authorized vendor, distributor or supplier of the Complainant’s trademarks.
Finally, the fact that the Disputed Domain Name redirected to a website which intended to mimic the Complainant’s website, including the Complainant’s company logo, reinforces the evidence that the Respondent is acting in a misleading manner, and in bad faith.
Registration and use in bad faith
The Complainant alleges that the Respondent registered and used the Disputed Domain Name in bad faith.
The Complainant states that its trademarks were already well known at the time the Respondent registered the Disputed Domain Name. Thus, the Respondent was well aware of the Complainant’s trademarks.
Moreover, the Respondent has illegitimately exploited the images and other intellectual property rights belonging to the Complainant on the Respondent website.
Finally, the Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with the Complainant’s trademarks.
The Respondent did not reply substantively to the Complainant’s contentions. However, the Respondent sent several informal email communications to the Center between February 5, 2019, and April 1, 2019.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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
The Complainant has trademarks rights over the term “sugarbearhair”, as evidenced by the trademark registrations listed in the Complaint.
Based on the evidence submitted, the Panel finds that the Disputed Domain Name <sugarbearhair.net> is confusingly similar to the Complainant’s trademark SUGARBEARHAIR. The Disputed Domain Name wholly incorporates the Complainant’s trademark as its only distinctive element.
Furthermore, the Disputed Domain Name contains the Complainant’s SUGARBEARHAIR trademark in its entirety; the addition of the TLD “.net” does not change this finding, since the TLD is generally disregarded in such an assessment of confusing similarity.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name, as such use inappropriately imitates the Complainant.
In addition, the Panel notes that the use of the Disputed Domain Name to resolve to a website nearly identical to the Complainant’s website at <sugarbearhair.com> is a use that cannot create rights or legitimate interests to the Respondent in the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not submit a formal response.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.
The Disputed Domain Name is currently inactive. At the time of filing the Complaint, the Disputed Domain Name fully incorporated the Complainant’s SUGARBEARHAIR trademark and it also redirected to a website displaying the trademark and logo of the Complainant, being the website under the Disputed Domain Name nearly identical to the Complainant’s official website available at “www.sugarbearhair.com”. The Panel agrees with the Complainant that this is clear evidence of bad faith registration and use.
This clearly shows that the Respondent was well aware of the Complainant’s trademark at the time of registering the Disputed Domain Name and it proceeded with the registration of the Disputed Domain Name.
Therefore, the Panel infers that the Respondent was using the Disputed Domain Name to intentionally attempt to attract Internet users to its website creating a likelihood of confusion with the SUGARBEARHAIR trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, and in doing so is disrupting the business of the Complainant.
Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that there is bad faith in the registration and use of the Disputed Domain Name, misleadingly diverting Internet users and disturbing the business of the Complainant.
The third element of paragraph 4(a) of the Policy is, therefore, satisfied.
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 <sugarbearhair.net> be transferred to the Complainant.
Pablo A. Palazzi
Date: April 8, 2019