WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bump Boxes, Inc. v. Contact Privacy Inc. Customer 0156768379 / Amber Beauty, Glow Organics, LLC
Case No. D2020-1030
1. The Parties
Complainant is Bump Boxes, Inc., United States of America (“United States”), represented by Jonathan LA Phillips, United States.
Respondent is Contact Privacy Inc. Customer 0156768379, Canada / Amber Beauty, Glow Organics, LLC, United States.
2. The Domain Name and Registrar
The disputed domain name <shopgloworganics.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2020. On April 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 29, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 29, 2020.
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 Respondent of the Complaint, and the proceedings commenced on May 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 3, 2020.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 5, 2020. 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
Complainant owns the trademark for GLOW ORGANICS, registered with the United States Patent and Trademark Office (“USPTO”) on August 1, 2017, with a stated date of first use in commerce of December 31, 2016, for organic cosmetics and non-medicated organic skin care preparations.
The Domain Name was registered on January 22, 2020 and is linked to a website that is branded “Glow Organics, LLC” and appears to offer skin care products.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant contends that it has extensive rights from use of its GLOW ORGANICS trademark in the United States and throughout the world since 2016. Complainant’s priority date pre-dates the registration of the Domain Name and, therefore, Complainant states that its use of the GLOW ORGANICS mark must predate Respondent’s use of the Domain Name.
Complainant states that the predominant elements of its GLOW ORGANICS marks are the words “glow” and “organics”. The mark is thus encompassed in the Domain Name. Complainant contends that a domain name need not be identical under paragraph 4(a)(i) of the Policy; instead, the domain name can be identical or confusingly similar. Further, Complainant states that this analysis is not limited merely to comparing the trademark and Domain Name. One must consider all of the surrounding circumstances, and must further consider what is likely to happen if the trademark is used in a normal way as a mark for goods.
The Domain Name differs from the GLOW ORGANICS trademark by adding the word “shop” and the generic Top-Level Domain (“gTLD”), “.com”. Complainant contends that its GLOW ORGANICS mark is recognizable within the Domain Name and constitutes the predominate element, and that adding the descriptive word “shop” does not avoid a finding of confusing similarity.
Complainant argues that the Panel can also consider that Complainant and Respondent are operating in the same industry. This suggests confusing similarity. The goods and services covered by the GLOW ORGANICS mark mirror those offered on the site linked to the Domain Name. Thus, Complainant states that paragraph 4(a)(i) of the Policy is satisfied and the Domain Name is confusingly similar to Complainant’s mark.
(ii) Rights or legitimate interests
Complainant contends that Respondent lacks rights or legitimate interests in the Domain Name for three reasons. First, Respondent chose to hide its identity when registering the Domain Name and thus Respondent cannot be said to be “commonly known” by the Domain Name. Second, Complainant states that any supposed bona fide use of the name “glow organics” was not made by Respondent before registration of the Domain Name. Complainant argues that in order to be “commonly known”, this must mean that the person or entity in whose name the domain name is registered should have been effectively known by that name by third parties before the moment of registration of the domain name. Here, the Domain Name was registered on January 22, 2020.
Third, Complainant argues that Respondent’s use of the Domain Name is not bona fide. Rather, Complainant states that Respondent’s registration seeks to confuse consumers and to redirect them to Respondent’s competing products. Complainant contends that Respondent’s use is infringing. Complainant has continually used the GLOW ORGANICS mark and has had its registration in place for years before Respondent registered the Domain Name. Complainant states that it is recognized by the public and in the industry as the sole source of the relevant goods and services under the GLOW ORGANICS mark. Complainant has not licensed or provided its consent to Respondent to use the mark.
Complainant asserts that Respondent’s apparent first use of the Domain Name did not begin until late 2020. The Domain Name is linked to a website offering products that compete with Complainant. The Domain Name infringes on Complainant’s rights. Complainant urges that a business may be lawful, but its use of the Domain Name may nevertheless be unlawful.
Finally, Complainant contends that Respondent’s use of its website is not a bona fide offering because Respondent uses the Domain Name to sell competing goods. In situations such as this, the issue is connected to bad faith. If a domain name is registered in bad faith, a respondent cannot have rights or legitimate interests in the domain name. If the Panel reached any other conclusion, it would mean that Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is contrary to the intent of the Policy.
Complainant refers to paragraph 2 of the Policy, which provides in relevant part:
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a)…(b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c)…and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.”
Complainant contends that it has a recognized reputation as shown by its trademark registration. Given the similarity in products and services, it is incredible to believe that Respondent did not know of Complainant’s rights in the GLOW ORGANICS mark. Respondent registered the Domain Name, which is confusingly similar to Complainant’s mark, and offers goods and services under the mark while using the mark in the Domain Name. Mere use of the Domain Name does not suffice to show bona fide use. At best, Respondent failed to abide by its responsibility to determine whether its Domain Name registration infringes someone else’s rights.
(iii) Registered and used in bad faith
Complainant states that Respondent has intentionally sought to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark about the source, sponsorship, affiliation, or endorsement of its website or business. This is sufficient for a finding on the third element under paragraph 4(b)(iv) of the Policy. Only an attempt, not success, is necessary.
At best, Respondent registered the Domain Name with a reckless disregard for its obligations under paragraph 2 of the Policy. At worst, Respondent purposefully chose to register the Domain Name to play off Complainant’s rights and sought to cause confusion as to the source, sponsorship, or affiliation of Respondent’s products and services.
Complainant asserts that UDRP panels interpret paragraph 2 of the Policy as an ongoing warranty that a domain name will not be used in bad faith. According to Complainant, this language negates the temporal distinction suggested by 4(a)(iii) of the Policy (“has been registered…in bad faith”) by requiring the registrant to make warranties as to the registrant’s future conduct.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its GLOW ORGANICS trademark, based on ownership of the mark’s registration in the United States.
Further, the Panel determines that the Domain Name is confusingly similar to the GLOW ORGANICS mark. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), states in relevant part that
“[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”.
Here, the Domain Name adds the descriptive term “shop”, placing it before the two words that comprise Complainant’s GLOW ORGANICS trademark. This does not negate confusing similarity. See Knoll, Inc. v. Identity Protection Service / Jeroen Goddijn, Furniture24, WIPO Case No. D2019-3071 (panel determined that addition of the words “shop” and “chair” could not overcome a finding of confusing similarity in the disputed domain name <barcelonachairshop.com>). Further, the use of the gTLD “.com” does not alter this analysis.
Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “[…] 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”.
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. It is clear that Complainant has not licensed or authorized Respondent to use Complainant’s GLOW ORGANICS trademark. Moreover, the limited evidence presented in this case indicates that Respondent is not using the Domain Name for a legitimate noncommercial or fair use. Instead, the Domain Name is linked to a website that appears to be selling beauty and skin care products, which compete with products offered by Complainant.
Complainant has alleged that Respondent is not commonly known by the Domain Name. In particular, Complainant has alleged, without providing evidence, that Respondent did not make a bona fide use of the name “glow organics” before registering the Domain Name, arguing that to be commonly known by that name, Respondent should have been known by the name prior to registering the Domain Name, which came after Complainant had registered its GLOW ORGANICS mark. WIPO Overview 3.0, section 2.3 provides that:
“[i]nsofar as a respondent’s being commonly known by a domain name would give rise to a legitimate interest under the Policy, panels will carefully consider whether a respondent’s claim to be commonly known by the domain name – independent of the domain name – is legitimate.”
Here, however Respondent has made no claim to be commonly known by the Domain Name because Respondent has not provided a response. Although Respondent used a privacy service when registering the Domain Name, the Registrar confirmed that the registrant is listed as “Amber Beauty”, with an organization name listed as “Glow Organics, LLC”. Respondent’s website linked to the Domain Name is also branded “Glow Organics, LLC”. However, Respondent has not responded in this case to rebut any of Complainant’s allegations. Therefore, the Panel does not know, one way or another, whether Complainant’s allegation is accurate that Respondent is not “commonly known” by the name “glow organics” (as opposed, e.g., to “Amber Beauty”).
Complainant has also alleged that Respondent’s use of the Domain Name is not bona fide because Respondent’s use is infringing, as Respondent allegedly seeks to confuse consumers and redirect them to Respondent’s competing products. Complainant argues that a business may be lawful (here, the act of selling beauty products), but its use of the Domain Name may nevertheless be unlawful if it seeks to capitalize on confusion with the brand of a competitor. Finally, Complainant alleges that it is implausible to believe Respondent did not know of Complainant’s rights in the GLOW ORGANICS mark and, in any event, Respondent failed to abide by its responsibility to determine whether the Domain Name registration would infringe someone else’s rights, as specified in paragraph 2 of the Policy.
As noted above, in light of these allegations, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Here, Respondent has not submitted a response and therefore has failed to rebut any of Complainant’s allegations concerning lack of rights or legitimate interests.
Accordingly, the Panel finds that, in light of all of these circumstances, Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore determines that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “[b]ad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
This case presents a close call under the third element of the Policy. Complainant has alleged that Respondent intentionally sought to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s GLOW ORGANICS mark about the source, sponsorship, affiliation, or endorsement of Respondent’s website or business. Further, Complainant contends that, at best, Respondent registered the Domain Name with reckless disregard for its obligations under paragraph 2 of the Policy, while at worst, Respondent purposefully registered the Domain Name to target Complainant’s rights and cause confusion as to the source, sponsorship, or affiliation of Respondent’s products and services, and that it is incredible to believe Respondent did not know of Complainant’s rights in the GLOW ORGANICS mark. In support of these points, Complainant asserts further that it has continually used its GLOW ORGANICS mark, that Complainant is recognized by the public as the sole source of the relevant goods and services under the GLOW ORGANICS mark, and that it has a recognized reputation as shown by its trademark registration.
While Complainant has made these allegations, Complainant has provided no evidence whatsoever (other than a single trademark registration) about the nature and scope of its own business, and no evidence to support any acquired distinctiveness, goodwill or reputation for its GLOW ORGANICS trademark (also referred to as secondary meaning) by reference, e.g., to sales figures and commercial reach across jurisdictions, the nature and extent of advertising using the mark, or the degree of actual public recognition (whether by consumers, industry, media). Further, while Complainant’s trademark registration dates from 2017, the registration itself is not sufficient evidence of any goodwill or reputation developed by Complainant through use of its GLOW ORGANICS trademark. In sum, there is simply insufficient evidence presented in this case of any accrued goodwill or recognition associated with Complainant’s GLOW ORGANICS mark, such that it can be easily inferred that Respondent targeted Complainant and its mark, or should have known of Complainant’s mark. As WIPO Overview 3.0, section 3.2.2 provides, even assuming a constructive notice approach might be considered, “[a]pplication of this concept may depend in part on the complainant’s reputation and the strength or distinctiveness of its mark, or facts that corroborate an awareness of the complainant’s mark”. Certainly, Respondent could have performed searches of the USPTO trademark database or on Google (although the searches there might have been inconclusive). However, the key point is that Complainant cannot rely on mere allegations – especially about itself but also concerning Respondent – but should support its claims with sufficient evidence for the Panel to find in its favor.
Further, in line with this analysis, the evidence is also insufficient to establish whether Respondent is taking unfair advantage of or otherwise abusing Complainant’s marks. Respondent apparently offers products in the same product category as Complainant. However, as noted above, Complainant has said nothing about its own business, and provided no evidence concerning the products that Complainant offers, including any branded with the GLOW ORGANICS trademark. On its own, the Panel searched for what appears to be Complainant’s website, located at “www.bumpboxes.com”, using the email URL provided in the Complaint for Complainant’s contact details as the basis for the search. The site appears to be branded “Bump Boxes” and provides safe products (i.e., avoiding dangerous chemicals) for pregnant women. See WIPO Overview 3.0, section 4.8 (“[…] it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision”). Searching Complainant’s site further, the Panel observed that some of the products offered on the site appear to be branded “Glow Organics 9”, while others carry different branding. The Panel also found a website located at “www.gloworganics.co”, which appears to carry some of the same products that are offered on the Bump Boxes website, including products (e.g., pregnancy bath bombs) that are intended for pregnant women. The contact address on this site provides the same postal address (in Peoria, Illinois) as the address for product exchanges listed on the site at “www.bumpboxes.com”. However, none of this information was provided by Complainant; thus, the Panel is uncertain about the status of this website, its connection to Complainant and the term, scope and extent of use of the Glow Organics brand. Further, comparing Complainant’s apparent websites to Respondent’s website, there is no attempt by Respondent to impersonate Complainant’s site. Moreover, the terms “glow organics” appear to be somewhat suggestive or descriptive of the products offered by Respondent, and have been used for other online offerings, see e.g.:
Thus, there is simply insufficient evidence presented in this case about Complainant and its GLOW ORGANICS trademark that would provide the Panel with a basis (i) for recognizing any accrued goodwill or recognition associated with Complainant’s GLOW ORGANICS mark, and thereby (ii) for inferring that Respondent knew of, or should have known of, Complainant and its GLOW ORGANICS mark, or that Respondent targeted Complainant in order to attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s GLOW ORGANICS mark.
Finally, Complainant asserts that previous UDRP panels have interpreted paragraph 2 of the Policy as an ongoing warranty that a domain name will not be used in bad faith, and thus the language of paragraph 2 negates the temporal distinction suggested by 4(a)(iii) of the Policy (“your domain name has been registered and is being used in bad faith”). However, WIPO Overview 3.0, section 3.2.1, while acknowledging that “[…] a number of cases in 2009 and 2010…explored application of registrant representations in UDRP paragraph 2 in finding so-called ‘retroactive’ bad faith registration”, observes that “this particular concept has not been followed in subsequent cases”. This Panelist is not prepared to declare that there can never be a case where lack of direct evidence of bad faith registration defeats the overall finding of bad faith, i.e., there may be circumstantial evidence pointing to/supporting such finding. As WIPO Overview 3.0, section 3.1 (noted above) provides, the main point is that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Here, in view of all of the circumstances discussed above, the Panel determines, on the balance of the probabilities, that Complainant has failed to establish that Respondent has engaged in such conduct.
The Panel finally notes that the UDRP is intended to provide an international and uniform policy across Top-Level Domains for resolving disputes between trademarks owners and domain name registrants, and this point is further supported because the Policy, on the one hand, and local laws (and related procedures) as to cybersquatting and trademark infringement, on the other hand, are different in several important respects, such that a set of facts might conclusively establish trademark infringement under domestic law, yet not be considered bad faith registration and use under the Policy, and vice versa. See Green Bay Packers, Inc. v. Moniker Privacy Services / Montgomery McMahon, WIPO Case No. D2016-1455. With this in mind, the Panel observes that Complainant remains free to pursue its claims, including as to possible trademark infringement, dilution or tarnishment, in the courts, which would allow for an examination of the relevant facts and circumstances under relevant domestic law.
In conclusion, in this case where Respondent failed to submit a reply to Complainant’s contentions, and in view of all of the above circumstances, Complainant has ultimately failed to satisfy its burden under the Policy’s third element.
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Date: June 12, 2020