WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cult Beauty Limited v. Domains By Proxy LLC / Shannon Thornburg
Case No. D2019-0931
1. The Parties
The Complainant is Cult Beauty Limited, United Kingdom, represented by Dechert LLP, United Kingdom.
The Respondent is Domains By Proxy LLC, United States of America (the “United States”) / Shannon Thornburg, United States.
2. The Domain Name and Registrar
The disputed domain name <cultbeautyusa.com> 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 April 24, 2019. On April 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 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 April 25, 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 April 29, 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 May 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2019. The Respondent submitted an informal email on April 25, 2019. No formal Response was filed.
The Center appointed Marilena Comanescu as the sole panelist in this matter on May 27, 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 language of the proceeding is English.
4. Factual Background
The Complainant, Cult Beauty Limited is a United Kingdom based online retailer of cosmetics and beauty products, founded in 2007 and currently with shipping available in 85 countries around the world. The Complainant gained certain reputation in its field of activity and obtained numerous awards for its beauty website. At the end of 2018, the Complainant’s turnover was over 68.9 million Great Britain Pounds.
The Complainant owns several trademark registrations for CULT BEAUTY, such as the United States word trademark registration No. 4378248 filed on November 24, 2011 and registered on August 6, 2013 for goods and services in classes 4, 8, 9, 14, 18, 21, 25, 28, 35, 44, and 45; and the European Union word trademark registration No. 010304715 filed on September 30, 2011 and registered on November 14, 2013 for goods and services in classes 4, 8, 9, 14, 18, 21, 25, 28, 35, 44, and 45.
The Complainant’s official website is available at “www.cultbeauty.co.uk”.
The disputed domain name <cultbeautyusa.com> was registered by the Respondent on March 22, 2019 and it was used in connection with a website offering make up and beauty products, presenting itself as “cultbeautyUSA”.
Before commencing the present proceeding, on April 9, 2019, the Complainant sent a letter to the Respondent asking the amicable transfer of the disputed domain name to it. No reaction was received.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its CULT BEAUTY trademark with a descriptive geographic indication, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith.
The Respondent submitted an informal message to Center’s communications on April 25, 2019 stating “To what is this regarding? Thank you”. It did not submit a formal response nor did reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Complainant holds rights in the CULT BEAUTY trademark.
The disputed domain name <cultbeautyusa.com> incorporates the Complainant’s trademark CULT BEAUTY in its entirety, with the addition of the letters “usa” at the end, letters that may be considered a geographical descriptor for the United States. However, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.
Numerous UDRP panels have considered that the addition of other terms (whether geographical, descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.net”, “.info”, “.com”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name <cultbeautyusa.com> is confusingly similar to the Complainant’s trademark CULT BEAUTY, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark CULT BEAUTY, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “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”. See section 2.1 of theWIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name.
The Respondent has used the disputed domain name in connection with a website promoting competing goods to those offered by the Complainant and presenting itself as being “cultbeautyUSA”. This is definitely not an activity falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain name.
Further, the Complainant’s letter to cease from using the disputed domain name, was ignored by the Respondent, as well as the present proceeding.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant holds trademark rights since 2011 and it gained a certain reputation in its field of activity. The disputed domain name was created in 2019 and incorporates the Complainant’s mark and a geographical term. For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.
At the time of filing the Complaint, the disputed domain name resolves to a website providing competing online beauty products.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.
The Respondent was using without permission the Complainant’s trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation or connection with the Complainant. Except for maliciously diverting Internet users searching for the Complainant to other website, such action may also tarnish the Complainant’s trademark.
The Complainant registered the disputed domain name under a proxy service and refused to participate in the present proceeding in order to provide arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <cultbeautyusa.com> be transferred to the Complainant.
Date: June 6, 2019