WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Babe Ventures Opco, LLC, Big IP Opco, LLC v. Tin Sekyou
Case No. D2019-0420
1. The Parties
The Complainant is Babe Ventures Opco, LLC / Big IP Opco, LLC of Salt Lake City, Utah, United States of America (“United States”), represented by Kain Spielman, P.A., United States.
The Respondent is Tin Sekyou of “Tokyo, China”.
2. The Domain Name and Registrar
The disputed domain name, <babeshair.com> (the “Domain Name”), is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2019. On February 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 27, 2019, 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 March 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2019.
The Center appointed Tony Willoughby 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.
The Complainant is in fact two associated companies being the registered proprietor of the BABE trade mark particularized in section 4 below and related trade marks and the exclusive licensee in respect of those trade marks. The Complainant has requested that the two companies be permitted to bring this Complaint jointly given that they both have rights in respect of that trade mark and their grievance against the Respondent is the same.
The matter of consolidation of complaints is dealt with in section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”). Section 4.11 answers the question “How do panels address consolidation scenarios?” as follows:
“The WIPO Center may accept, on a preliminary basis, a consolidated complaint where the criteria described below are prima facie met. Any final determination on consolidation would be made by the appointed panel, which may apply its discretion in certain circumstances to order the separation of a filed complaint. In all cases, the burden falls to the party seeking consolidation to provide evidence in support of its request.
4.11.1 Multiple complainants filing against a single respondent
Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.
In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation”.
The Panel accedes to that request satisfied that the conditions set out in the preceding quote are met in this case. The Panel further notes that the Respondent has not objected to consolidation. All references herein to the “Complainant” are references to both companies save where the context otherwise requires.
4. Factual Background
The Complainant is based in the United States and has been selling hair extension products for about nine years. It is the registered proprietor/exclusive licensee of several United States trade mark registrations comprising or including the word “Babe”, one of which is United States Registration No. 4,790,017 for BABE (standard character mark) registered on August 11, 2015 (application filed December 19, 2014) in classes 3, 26, 41 and 44 for hair extensions and a variety of services associated with hair care.
A slogan commonly used by the Complainant in relation to its sale of hair products is “Turning Heads, Stopping Hearts”, which the Complainant has also registered as a trade mark in the United States (United States Registration No. 5,159,148 registered on March 14, 2017) and with a first use claim of February 2, 2011.
The Domain Name was registered on August 9, 2016 and has been connected to a “Babes Hair” website offering hair products such as wigs and hair extensions.
In November 2018, the Complainant placed an order for certain of the Respondent’s hair products. The goods arrived in cartons marked “Babes” and featuring the slogan “Turning Heads, Stopping Hearts”.
On November 29, 2018 the Complainant’s representative sent a cease-and-desist letter to the Respondent drawing the Respondent’s attention to the Complainant’s trade mark rights and seeking inter alia transfer of the Domain Name. The Respondent did not respond to the letter, but shortly thereafter the website connected to the Domain Name closed down. The Domain Name now resolves to a webpage featuring the message “Sorry, this shop is currently unavailable”.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly to its BABE registered trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises the words “babes” and “hair” at the second level. For the purposes of the assessment of identity and confusing similarity under paragraph 4(a)(i) of the Policy, the generic Top-Level Domain (“gTLD”) is normally ignored, where, as here, the gTLD serves no purpose other than the technical one. Thus, the assessment is between “babeshair” extracted from the Domain Name and BABE, the Complainant’s trade mark.
The Complainant’s trade mark BABE being clearly recognizable in the Domain Name, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purposes of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has established to the satisfaction of the Panel that its BABE brand of hair products has acquired a significant reputation and goodwill. The Complainant has also satisfied the Panel that it has not granted the Respondent any rights in respect of its trade mark. While the expression “Babes hair” as it appears in the Domain Name has a descriptive “feel” to it, the manner in which the term “Babes” is used on the Respondent’s packaging in combination with the Complainant’s distinctive trademarked slogan TURNING HEADS, STOPPING HEARTS indicates to the Panel that the Respondent is using the Domain Name to target the Complainant and to take advantage of the goodwill attached to the Complainant’s BABE trade mark.
The Complainant has made out a prima facie case under this element of the Policy. In other words the Respondent has a case to answer. However, the Respondent has not provided any response to the Complainant’s contentions.
In the absence of an answer from the Respondent the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Complainant’s primary contention under this element of the Policy is that, as provided in paragraph 4(b)(iv) of the Policy, the Respondent has by using the Domain Name “intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location”.
While a failure to respond to a complaint is of itself proof of nothing, the Respondent’s failure here to respond to the cease-and-desist letter sent to the Respondent in November 2018 followed by the failure to file a Response to the Complaint and the closing down of the trading website connected to the Domain Name suggests to the Panel that the Respondent has no proper answer to the Complainant’s contentions.
By the same reasoning as that set out in section C above, the Panel finds that the Respondent registered the Domain Name and has been using it to attract Internet users to its website on the back of the fame of the Complainant’s BABE trade mark in the field of hair products, notably hair extensions. Thus, the Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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 Domain Name, <babeshair.com>, be transferred to the Complainant.
Date: April 11, 2019