1. The Parties The Complainant is Roger Aoun of London, United Kingdom of Great Britain and Northern Ireland (the “UK”), represented by Silverman Sherliker LLP, UK.
The Respondent is Ara Roson De Beas of Madrid, Spain, self-represented.
2. The Domain Name and Registrar The disputed domain name is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2014. On September 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2014, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 9, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 29, 2014. On October 13, 28 and 30, 2014 the Center received several informal communications from the Respondent.
The Center appointed Brigitte Joppich as the sole panelist in this matter on November 13, 2014. 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 paragraph 7 of the Rules.
4. Factual Background The Complainant operates a beauty and cosmetics business distributing products including, without limitation, skincare facial and body products, facial and body treatments, and tanning products.
The Complainant owns a number of trademark registrations for BEAUTYLAB, some of them featuring additional textual or graphical elements, inter alia United States trademark registration No. 3735306 BEAUTYLAB, filed on May 25, 2005, and registered on January 5, 2010, in connection with various services in classes 35, 42 and 44; UK trademark registration No. 2253190 BEAUTYLAB, applied for on November 17, 2000, and registered on June 29, 2001, in connection with goods and services in classes 3 and 42, International registration No. 1001129 BEAUTYLAB, registered on February 5, 2009, in connection with goods and services in classes 3 and 44; and International registration No. 1005625 BEAUTYLAB, registered inter alia in Spain in January 14, 2009, in connection with goods and services in classes 3 and 44 (the “BEAUTYLAB Marks”). The Complainant owns numerous domain names consisting of the BEAUTYLAB Marks, including , and .
The disputed domain name was registered on April 26, 2012, and Internet users visiting the website at the disputed domain name are forwarded to the Respondent’s website at “www.araroson.com”, where the Respondent offers services related to beauty and healthcare.
5. Parties’ Contentions A. Complainant The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The disputed domain name is confusingly similar to the BEAUTYLAB Marks as such marks shapes the disputed domain name and as the additional word “my” is commonly used as a brand prefix and adds no distinctiveness.
(2) The Complainant argues that its use and registration of the BEAUTYLAB Marks is senior to the Respondent's use and registration of the disputed domain name by approximately 12 years, that the BEAUTYLAB Marks grant the Complainant the exclusive right to use such marks across 26 jurisdictions worldwide in respect of the services for which they are registered, that the services purported to be provided by the Respondent are identical to those rendered by the Complainant, and that the Respondent’s use of the disputed domain name does not allow the Respondent to develop any legitimate rights in the disputed domain name. The Complainant requests the Respondent to provide evidence supporting rights or legitimate interest in respect of the disputed domain name.
(3) The Complainant states that it never granted the Respondent a permission or license to use its BEAUTYLAB Marks or works protected by copyright or any similar mark, text, artwork or other work or device that represents the Complainant or can be associated with it. It submits that the disputed domain name has been registered and is used in bad faith. It argues that the Respondent’s use of the disputed domain name constitutes an infringement of the Complainant's BEAUTYLAB Marks and therefore bad faith for purposes of paragraph 4(b)(iv) of the Policy as the main element of the disputed domain name is the word “Beautylab”, as the additional word “my” does not contribute to the distinctiveness of the brand but suggests customized or personalized services of the Complainant’s brand, and as the Respondent's services promoted on the website hosted at the disputed domain name are identical or at least confusingly similar to the services for which the Complainant's BEAUTYLAB Marks are registered. The Complainant further contends that the Respondent is using the disputed domain name with the intention of attracting and/or diverting customers to her website for commercial gain by creating a likelihood of confusion with the Complainant's BEAUTYLAB Marks and its registered domain names as to the source or affiliation of its website and services. In this context, the Complainant argues that it is very likely that a customer clicking on a link to the disputed domain name would do so on the assumption that the service was associated with the Complainant’s global brand or was related to one of the Complainant’s large portfolio of registered brand names and that the Respondent would thus benefit by diverting customers of the Complainant to engage the Respondent’s services in lieu of the Complainant’s.
B. Respondent On October 13, 28 and 30, 2014 the Center received several informal communications from the Respondent. In her communication of October 13, 2014, the Respondent stated that she is a cosmetician and that the commercial name of her (small) beauty center is “My beauty Lab”.
6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trade mark; 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.
A. Identical or Confusingly Similar The disputed domain name fully incorporates the BEAUTYLAB Marks in which the Complainant has rights.
In the view of the Panel, the mere addition of the word “my” does not eliminate the similarity between the BEAUTYLAB Marks and the disputed domain name, as the word BEAUTYLAB is the predominant part of the disputed domain name and as the additional generic word “my” is insufficient to hinder a finding of confusing similarity under the Policy (cf. Clarins v. Registration Private, Domains By Proxy, LLC / Online Management LTD, Online Resource Management Ltd, WIPO Case No. D2014-1485; Raffles International Limited v. Top Business Names, WIPO Case No. D2013-1880; Salomon S.A.S. v. yu qing, WIPO Case No. D2013-2131; Burberry Limited v. Xiao Dan Jia, WIPO Case No. D2013-2215).
Furthermore, it is well established that genericTop-Level Domains are generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
In turn, the Respondent states that she is a cosmetician and that the commercial name of her (small) beauty center is “My beauty Lab”. Although the Respondent did not provide any evidence in this regard, this contention is confirmed by the printout of the Respondent’s website provided by the Complainant (Annex 8 to the Complaint). In the view of the Panel, it is possible that the Respondent could rely on own rights or legitimate interests in the disputed domain name based on the (generic or dictionary) use in connection with her beauty center.
However, in the light of the Panel’s finding below (cf. 6.C.), it is not necessary for the Panel to come to a decision in this regard.
C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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 the respondent’s website or location or of a product or service on its website or location.
In the present case, on balance, the Panel is not satisfied that the Respondent registered the disputed domain name with positive knowledge of the Complainant’s trademark rights and therefore in bad faith for the following reasons:
- The Complainant’s BEAUTYLAB Marks consist of the dictionary words “beauty” and “lab” and have, in the opinion of the Panel, only a comparatively low degree of distinctiveness with regard to services related to beauty and healthcare as provided by the Respondent.
- The Complainant did not offer any evidence that the BEAUTYLAB Marks enjoy a secondary meaning (see, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.7) or are well-known.
- The Complainant did not provide any evidence with regard to the duration and extent of its use of the BEAUTYLAB Marks in Spain, where the Respondent is located.
- The Respondent uses the disputed domain name to forward users to her website available at “www.araroson.com” and refers to the term “my beauty lab” on her website in connection with her business, stating inter alia “My Beauty Lab es un laboratorio de belleza” (in English “My Beauty Lab is a laboratory of beauty”) and therefore, in the view of the Panel, uses the term in a dictionary rather than in a trademark sense.
Consequently, the Panel finds that the Complainant has not satisfied the requirements of paragraph 4(a)(iii) of the Policy.