WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bare Escentuals, Inc. v. Russell Switzer / Domains by Proxy, Inc.

Case No. D2011-0407

1. The Parties

Complainant is Bare Escentuals, Inc. of California, United States of America, represented by Cooley LLP, United States of America.

Respondent is Russell Switzer / Domains by Proxy, Inc. of Louisiana, United States of America.

2. The Domain Name and Registrar

The disputed domain name <baremineral-makeup.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2011. On March 3, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 4, 2011, GoDaddy.com, Inc. 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 Complainant on March 8, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 12, 2011.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2011. The Center received email communications from Respondent and a Response was submitted on April 8, 2011.

The Center appointed Jordan S. Weinstein as the sole panelist in this matter on April 11, 2011. 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.

A. Late filing of Response

As noted above, Respondent filed its Response on April 8, 2011, after the deadline for filing the same of April 3, 2011. However, Respondent explained that he is currently on active duty with the United States Army in Afghanistan. For this reason, the Panel will consider Respondent’s Response despite the late filing.

B. Registrants “Consent to Remedy”

In a section of its Response titled “Consent to Remedy (optional),” Respondent states that although he does not agree with Complainant’s claims, he has allowed the subject domain name to expire and no longer owns the rights to it. This Panel finds to the contrary; the domain name is not expired and Respondent is still its listed owner. Although this section of the Response was titled “Consent to Remedy,” Respondent has not stated to what remedy he consents. Therefore, the Panel will proceed to issue its decision.

4. Factual Background

Complainant is the owner of several U.S. trademark registrations for BAREMINERALS in connection with cosmetics. Of these, one registration, U.S. Reg. No. 2,321, 607, issued in February of 2000, five years before the disputed domain name was registered on December 9, 2005. The remaining registrations, Nos. 3,090,836, 3,377,240 and 3,377,302, all issued after the date on which the domain name was registered.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has sold cosmetics, skin care and related products for more than 30 years under a number of brand names, and since 1993 has used the trademark BAREMINERALS in connection with cosmetic and skin care products. In addition to the aforementioned United States trademark registrations, Complainant owns the domain name <bareminerals.com>, registered on June 11, 2004, which resolves to a website Complainant uses to market products under its BAREMINERALS mark. Complainant asserts that it devotes substantial resources to promoting its products under the BAREMINERALS mark, and that the products sold under the mark are the subject of significant media attention. Complainant also asserts that its BAREMINERALS line has received hundreds of awards. As a result, Complainant asserts that the BAREMINERALS mark is famous and widely associated with its products.

Complainant asserts that Respondent registered the subject domain name years after Complainant adopted and registered its BAREMINERALS trademark and domain name. Complainant asserts that Respondent is using the domain name improperly to generate revenue for Respondent, in order to offer similar mineral makeup for sale. Complainant asserts that Respondent is advertising and offering for sale on its website connected to the subject domain name, makeup under the confusingly similar name “Bare Images Mineral Makeup,” and marketing itself as “Bare Images Minerals.” Complainant asserts that Respondent’s wife is responsible for maintaining Respondent’s website, that Complainant has been engaged in correspondence with Respondent’s wife for months relating to her unauthorized use of Complainant’s trademarks in promoting her products; that Respondent’s wife previously assured Complainant that she would cease her infringement of Complainant’s trademarks, but never disclosed that she was affiliated with the subject domain name or that she continued to operate the associated website.

Complainant asserts that the domain name is confusingly similar to Complainant’s trademark because it incorporates that mark in its entirety, removing only the plural “s” and adding the generic term “makeup.” Complainant asserts that Respondent has no rights or legitimate interests in the domain name, because Respondent registered the domain name in 2005, long after Complainant and its predecessors developed rights in the BAREMINERALS marks and domain name. Complainant asserts that Respondent owns no trademark registrations identical, similar or related to Complainant’s marks and that Respondent is not an authorized dealer, distributor or licensee of Complainant.

Complainant asserts that Respondent registered and used the domain name in bad faith because Complainant and its predecessors have owned and used the BAREMINERALS trademarks since the 1990’s, and Complainant owns and uses the domain name consisting solely of that mark before Respondent’s registration of the domain name. Complainant asserts it is not possible that Respondent would have been unaware of Complainant’s brands at the time the domain name was registered in 2005, and despite this knowledge, Respondent registered a domain name that is confusingly similar to Complainant’s mark. Complainant asserts that such conduct is evidence of bad faith registration and use. Complainant asserts that the domain name is so obviously connected with its well-known name and products that its very use by Respondent, who has no connection with the products, suggests opportunistic bad faith. Complainant asserts that Respondent could not have chosen or subsequently used its domain name for any reason other than to trade on Complainant’s name and to confuse Internet users, thus to attract them to Respondent’s website.

B. Respondent

Respondent asserts that the domain name <baremineral-makeup.com> was registered in December of 2005, and that Complainant’s case should be dismissed without consideration based on lack of timeliness because the Complaint was presented five years after the subject domain name was registered. Respondent does not dispute Complainant’s business existence, but asserts that the subject domain name differs significantly from Complainant’s BAREMINERALS trademark, and that no reasonable person would ever confuse the two. Respondent disagrees with Complainant’s claim that the subject domain name is being used improperly to generate revenue.

Respondent asserts that in five years of business, not one single customer has ever asked for a refund or claimed to have been confused between the subject domain name and Complainant’s products or product lines.

Respondent asserts that Complainant’s claim regarding his wife are false; that his wife has not agreed to any of Complainant’s claims, and that Complainant has been illegally harassing his wife and attempting to bully and intimidate her.

Respondent asserts that Complainant is trying to prevent free trade and monopolize the industry, using Complainant’s name to try and drive competitors out of the business.

6. Discussion and Findings

A. Applicable Policy Provisions

Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

In order to prevail in a proceeding under the Policy, a Complainant must typically prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.

However, the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:

(i) Circumstances indicating that [the Respondent has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or

(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.

Policy, paragraph 4(b). These circumstances are non-exclusive, and a Panel may consider other circumstances as constituting registration and use of a domain name in bad faith.

B. Untimeliness

Respondent asserts that the complaint should be dismissed because it was untimely filed; over five years have elapsed since the disputed domain name was registered. The Policy contains no statute of limitations nor any specific provision preventing the filing of complaints due to lack of timeliness. United States trademark law recognizes the doctrine of laches, which may be applied to bar a trademark owner from monetary relief where (1) the trademark owner knew of an infringing right but inexcusably delayed in taking action and (2) the purported infringer would be prejudiced by permitting the trademark owner to assert its rights at this time. See Cuban Cigar Brands N.V. v. Upmann Intern., Inc., 457 F. Supp. 1090, 1096 (S.D.N.Y. 1978); aff’d without opinion, 607 F.2d 995 (2d Cir. 1970). However, this doctrine has been held not to prevent injunctive relief where infringement is deliberate, 6 McCarthy on Trademarks and Unfair Competition §31.9 (2009), or where confusion is inevitable; Id. at §31.10. The Panel is reluctant to read a timeliness requirement into the Policy when the plain language of the Policy contains no such requirement, and there is no clear consensus for (and in fact, could be read as a predominant view against) such a requirement. See WIPO Overview 2.0, paragraph 4.10. Nevertheless, delay in bringing a complaint under the Policy may make it more difficult for a complainant to establish its case on the merits. See WIPO Overview 2.0, paragraph 4.10; Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544; see also 6 McCarthy on Trademarks and Unfair Competition §31.11 (2009)(plaintiff’s delay weakens its claim of likely confusion). The Panel has taken Complainant’s delay in filing this Complaint into account in reviewing Complainant’s evidence and assertions under the factors of paragraph 4(a) of the Policy.

C. Identical or Confusingly Similar

The Panel agrees that the disputed domain name <baremineral-makeup.com> is confusingly similar to Complainant’s registered trademark BAREMINERALS. The disputed domain name contains Complainant’s registered mark in its entirety, merely deleting the plural “s”. Adding the generic word “makeup” fails to distinguish the domain name from Complainant’s registered mark. See eBay Inc. v. ebayMoving/Izik Apo, WIPO Case No. D2006-1307; Pfizer Inc. v. William James, WIPO Case No. D2004-0583 and cases cited therein. The Panel finds that Complainant has provided sufficient evidence to establish element 4(a)(i) of the Policy.

D. Rights or Legitimate Interests

Complainant asserts, and Respondent has failed to rebut, that Respondent is not an authorized dealer, distributor or licensee of Complainant, and that Respondent does not hold any trademark registrations that are identical, similar or related to Complainant’s mark. Pursuant to paragraph 4(c)(i) of the Policy Respondent can demonstrate rights and legitimate interests in the domain name by proving use of the subject domain name, or a name corresponding to the domain name in connection with the bona fide offering of goods and services. Here, the disputed domain name resolves to a website with the title “Bare Images”, promoting the sale of “Bare Images mineral makeup.” Even if Respondent’s offering of “Bare Images mineral makeup” is presumed to be a bona fide offering of goods, the name “Bare Images mineral makeup” does not correspond to the domain name <baremineral-makeup>. As a result, the Panel finds that Respondent has not established a defense pursuant to paragraph 4(c)(i) of the Policy. Nor has Respondent shown that it is commonly known by the domain name. The Panel finds that Respondent’s apparent sale of cosmetics on the website linked to the disputed domain name disentitles Respondent to assert that it is making a non-commercial or fair use of the domain name. As a result, the Panel finds Complainant has established the elements of paragraph 4(a)(ii) of the Policy.

E. Registered and Used in Bad Faith

Complainant asserts that Respondent has registered the disputed domain name in order to offer similar makeup for sale under the name “Bare Images Mineral Makeup”; an assertion that the disputed domain name was registered in bad faith because Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that website under paragraph 4(b)(iv) of the Policy.

Complainant’s evidence to support this assertion of intent is sparse. Complainant asserts that Respondent must have been aware of Complainant’s registration and reputation when Respondent registered the disputed domain name. However, the Complaint included no evidence of actual use of Complainant’s trademark, no evidence with which the Panel could gauge the fame or renown of the mark, and in particular no evidence of whether the mark was famous or well-known prior to Respondent’s registration of the domain name. While the Panel would normally be reluctant to find for Complainant on such a thin record, particularly given the lapse of time since the domain name was registered, the Panel notes that Respondent has admitted to Complainant’s “business existence” and did not dispute the assertions regarding Complainant and its reputation, despite disputing other assertions in the Complaint. Most important, in the Panel’s assessment, Respondent did not dispute Complainant’s assertion that Respondent must have been aware of Complainant when Respondent registered the disputed domain name. As a result, the Panel finds that Respondent was aware of Complainant and its trademark when Respondent registered the disputed domain name. Combined with the fact that Respondent is using the website linked to the disputed domain name to sell products seemingly of the same type as those identified by Complainant’s registered trademark, this awareness leads the Panel to conclude that Respondent has registered and used the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <baremineral-makeup.com> be transferred to the Complainant .

Jordan S. Weinstein
Sole Panelist
Dated: May 5, 2011