WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shiseido Americas Corporation and Shiseido UK Limited v. Antonina Therrien

Case No. DEU2019-0018

1. The Parties

The Complainant is Shiseido Americas Corporation, United States of America (“United States”) and Shiseido UK Limited, United Kingdom, represented by Ladas & Parry, United States.

The Respondent is Antonina Therrien, Germany.

2. The Domain Name, Registry and Registrar

The Registry of the disputed domain name <bareminerals.eu> (the “Domain Name”) is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is Key-Systems GmbH.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2019. On December 17, 2019, the Center transmitted by email to the Registry a request for registrar verification in connection with the Domain Name. On December 18, 2019, the Registry 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 the Complainant on December 18, 2019 providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 19, 2019.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).

In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 3, 2020. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was February 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2020.

The Center appointed Indrek Eelmets as the sole panelist in this matter on March 2, 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 ADR Rules, Paragraph B(5).

4. Factual Background

The Complainant is a leading manufacturer of cosmetics with operations in approximately 120 countries. The Complainant and its parent organization were founded in 1872. The Complainant employs approximately 46,000 individuals, was ranked number first among Asian cosmetic manufactures according to WWD Beauty Inc., and its net sales are approximately JPY 1 trillion.

The Complainant owns several European Union trademark registrations for the BAREMINERALS mark and uses the trademark in respect of, inter alia, various types of cosmetics, including:

- wordmark BAREMINERALS, Reg. No. 004001558, registration date December 7, 2005;
- wordmark BAREMINERALS, Reg. No. 010178481, registration date January 9, 2012; and
- wordmark BAREMINERALS, Reg. No. 011286812, registration date March 6, 2013.

The Domain Name was registered on September 15, 2017 by the Respondent. On the date of the Decision, the Domain Name resolves to a website featuring sponsored links. On the relevant website, the Domain Name is offered for sale (“BUY THIS DOMAIN The domain bareminerals.eu may be for sale by its owner!”).

5. Parties’ Contentions

A. Complainant

The Complainant contends the following.

The Complainant provides evidence of European Union trademark registrations. Said registrations demonstrate the Complainant’s rights in the BAREMINERALS mark under the ADR Rules. The Domain Name is identical to the BAREMINERALS trademark as the Domain Name wholly incorporates the mark and does not include any additional terms beyond the “.eu” country code Top-Level Domain (“ccTLD”).

The Respondent has no rights or legitimate interests in respect of the Domain Name. There is no evidence that the Respondent made any effort to use the Domain Name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent has been commonly known by the Domain Name. There is no evidence that the Respondent has been making a legitimate noncommercial or fair use of the Domain Name. The Respondent registered the Domain Name without the Complainant’s authorization or consent.

The Domain Name was registered in bad faith in order to prevent the Complainant from reflecting its name in the Domain Name. The Respondent’s email address associated with the Domain Name is “[. . .]@gmail.com”. This email address is associated with an individual named Deborah R. Heacock, who is associated with 74 domain names, several of which include third party well-known trademarks including, e.g., GUESS, MAZDA, and WARNER BROS. Several UDRP panels have found that Ms. Heacock has registered domains in bad faith in part because of her desire to sell domains to brand owners (e.g. Chocoladefabriken Lindt & Sprüngli AG v. Deborah R. Heacock, WIPO Case No. DME2013-0010; Statoil ASA. v. Deborah R. Heacock, WIPO Case No. DME2013-0011; Eveready Battery Company, Inc. v. Deborah R. Heacock, WIPO Case No. D2013-0463). The Complainant submits that the Respondent is a cybersquatter and that based on her prior actions, the Domain Name was registered in bad faith. The Respondent registered the Domain Name using the name Antonina Therrien in order to dissociate herself with the name Deborah Heacock. However, the Respondent continuously uses the email address “[. . .]@gmail.com” to register domain names, which as noted above is associated with Deborah Heacock. Further, the Respondent was or should have been aware of the Complainant and its trademark as Complainant is well known in the field of cosmetics and offers its goods under the BAREMINERALS mark all over the world. Moreover, the Domain Name currently resolves to a page featuring pay-per-click advertising in the Complainant’s field of activity which shows that the Respondent is attempting to directly benefit from the advertising. Finally, the Domain Name is listed for sale to the general public and an offer to sell a domain to the general public is evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to Paragraph B(11)(d) of the ADR Rules the Panel shall issue a decision granting the remedies requested by the Complainant in the event that the Complainant proves the following three elements:

(i) The domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law and; either

(ii) The domain name has been registered by the Respondent without rights or legitimate interest in the name; or

(iii) The domain name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law

The Panel finds that the Complainant has established that it has rights in the BAREMINERALS trademark.

The Domain Name incorporates the trademark in its entirety. It is accepted case law that the “.eu” suffix should be disregarded for assessing identity or confusing similarity. The Panel finds that the Domain Name is identical to the BAREMINERALS trademark.

Therefore, the Panel holds that the Complainant has established the first element of Paragraph B(11)(d)(1)(i) of the ADR Rules.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph B(11)(e) of the ADR Rules outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:

(1) prior to any notice of the dispute, the Respondent has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;

(2) the Respondent, being an undertaking, organisation or natural person, has been commonly known by the domain name, even in the absence of a right recognised or established by national and/or European Union law;

(3) the Respondent is making a legitimate and noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognised or established by national law and/or European Union law.

According to prior ADR panel decisions, the complainant needs to make out a prima facie case that the respondent lacks rights or legitimate interests and then the onus shifts to the respondent to rebut the assertion that the respondent lacks rights or legitimate interests (see section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)¹.

The Respondent did not reply to the Complainant’s contentions. There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name. The Complainant has not authorized or given consent to the Respondent to register the Domain Name identical to the BAREMINERALS trademark. Further, in the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name is further supported by the fact that the Domain Name resolves to a page featuring pay-per-click links, among others, in the Complainant’s field of activity (cosmetics). Prior panels have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see section 2.9 of the WIPO Overview 3.0).

The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Complainant has established the second element of Paragraph B(11)(d)(1)(ii) of the ADR Rules.

C. Registered or Used in Bad Faith

Having established that the Domain Name is identical to the Complainant’s trademark and it has been registered by the Respondent without rights or legitimate interest in the name, it is not necessary for the Complainant to show, or for the Panel to make a decision, that the Respondent registered or is using the Domain Name in bad faith. However, for the sake of completeness of the case, the Panel concludes that the evidence and arguments submitted by the Complainant show that the Domain Name has been registered and is used in bad faith by the Respondent.

The Panel notes that the Complainant is well known in the field of cosmetics and offers its goods under the BAREMINERALS mark in many countries within European Union, including Germany, where the Respondent appears to reside.

The Panel also considers it likely that due to the identical email address, the Respondent is related to an individual named Deborah R. Heacock. As several UDRP panels have found, Ms. Heacock has a previous history of registering domain names in bad faith, in part because of her desire to sell domains to brand owners. Similarly in this case, the Domain Name is offered for sale to the general public.

All of the circumstances of this case suggest that, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights at the time the Respondent registered the Domain Name and that the Respondent was motivated to take unfair advantage of the Complainant’s trademark.

Consequently, the Panel finds that the Complainant has also established the third element of Paragraph B11(d)(1)(iii) of the ADR Rules.

7. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <bareminerals.eu> be transferred to the second Complainant² .

Indrek Eelmets
Sole Panelist
Date: March 16, 2020

¹ Considering the substantive similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel also refers to UDRP case law and analysis, where appropriate.

² The Second Complainant is a private limited company registered in the United Kingdom and satisfies (at least until December 31, 2020) the general eligibility criteria for registration set out in Paragraph set out in Paragraph 4(2)(b) of Regulation (EC) No 733/2002 as amended by articles 20 and 22 of the Regulation (EU) 2019/517.