The Complainant is Burt’s Bees, lnc. of Delaware, United States of America, internally represented.
The Respondent is Private Registration of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Bargin Register Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2011. On October 21, 2011, the Center transmitted by email to Bargin Register Inc. a request for registrar verification in connection with the Disputed Domain Name. Having received no reply to the initial request and subsequent reminders of October 31 and November 3, 2011, the Center informed Bargin Register Inc. on November 8, 2011 that it would proceed based on the information gathered from the Complaint and the public WhoIs database.
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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2011.
The Center appointed Alistair Payne as the sole panelist in this matter on December 13, 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. 4. Factual Background
The Complainant is a manufacturer and distributor of a line of natural personal care products. The Complainant’s products have been sold in the United States under the BURT’S BEES mark since 1988. And the Complainant owns various United States and foreign trade mark registrations for the BURT’S BEES trade mark including United States registration 2171302 for the word mark BURT’S BEES registered on July 7, 1998.
The Respondent is listed as “Private Registration” in Grand Cayman and according to the public WhoIs database, the Disputed Domain Name was created on February 8, 2008. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trade mark rights in the BURT’S BEES mark as set out above and that it has used the mark since 1988 and that as a consequence of its extensive use in the United States it is a famous mark. It says that the Disputed Domain Name wholly incorporates its mark and the only difference between the substantive portion of the Disputed Domain Name and the Complainant’s mark is a hyphen between the words “burt’s” and “bees”. The Complainant submits that this is inadequate to distinguish the Disputed Domain Name from the Complainant’s mark and it is therefore confusingly similar to that mark.
As far as the second element of the policy is concerned, the Complainant submits that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, that it has not authorized or licensed the Respondent’s use and that as far as it is aware the Respondent has not used any mark that is identical or confusingly similar to the Disputed Domain Name in commerce. The Complainant says that the Respondent uses the Disputed Domain Name to resolve to different Internet websites on each occasion and in doing so is seeking to redirect Internet users to those websites so as to benefit commercially and financially from this activity. It submits that using the Disputed Domain Name in this way, to divert Internet users in this kind of misleading way is not a bona fide activity. As a result the Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
In relation to registration and use in bad faith, the Complainant says that the registration of the very distinctive BURT’S BEES mark in the Disputed Domain Name in 2008 and a long time after the Complainant had started using its mark is indicative that the Disputed Domain Name was not registered in good faith. The Complainant submits that the Respondent’s use of the Disputed Domain Name as described above, to intentionally attract, for commercial gain, Internet users and to redirect them to various third party websites by creating a likelihood of confusion with the Complainant’s BURT’S BEES mark as to the source, sponsorship, affiliation, or endorsement of these third party websites and/or the products or services offered on these websites under paragraph 4(b)(iv) of the Policy only reinforces the inference that the Disputed Domain Name was registered in bad faith and is also evidence of use in bad faith. The Complainant submits that the practice that the Respondent is engaging in of re-directing Internet users to differing websites every time that they type in the Disputed Domain Name to a web browser is worse than the practice of diverting consumers to a pay-per-click site because the practice forces users to one website which offers products or services competing with the Complainant’s products. As a result the Complainant submits that the Disputed Domain Name has been both registered and used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has demonstrated that it owns registered trade mark rights in the word mark BURT’S BEES as set out above and in particular has owned United States trade mark registration number 2171302 since 1998. Further the Disputed Domain Name differs from the Complainant’s mark only by the insertion of a hyphen between the words “Burt’s” and “Bees” and the omission of the apostrophe in “Burt’s”. These minor differences are insufficient to distinguish the Disputed Domain Name from the Complainant’s mark BURT’S BEES. Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s mark and that the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
Under the second element of the Policy the onus is upon the Complainant to make out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and it is then for the Respondent to rebut that case.
The Complainant submits that it has not authorized or licensed the Respondent’s use of the Disputed Domain Name and that to the best of its knowledge the Respondent does not use it in connection with a bona fide provision of goods or services and has not used any identical or confusingly similar mark to the Disputed Domain Name in commerce. In addition the Complainant says that the Respondent’s use of the Disputed Domain Name to resolve to different websites featuring competing products and thereby using the Disputed Domain Name to misleadingly divert Internet users, most likely for the Respondent’s commercial gain, is not legitimate use and amounts to use in bad faith under the Policy.
As further set out below, the Panel finds that the Respondent’s use of the Disputed Domain Name is entirely inconsistent with bona fide use, or with a finding that it has rights or legitimate interests in the Disputed Domain Name. The Panel finds that the Complainant has made out its prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. As no response has been filed in these proceedings, there is no evidence before the Panel to rebut the Complainant’s case. In addition the Panel finds that in the circumstances of the Respondent’s use of the Disputed Domain Name, its lack of bona fides is only reinforced by its use of a privacy service to shield it from disclosure and communications.
Accordingly, the Panel finds that the Complaint succeeds under the second element and that the Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
The Complainant has demonstrated the registration and use of its BURT’S BEES mark in the United States since 1998. According to the Complainant it has made extensive use of its mark since this time, to the extent that it asserts that the mark is famous. While, in view of the lack of evidence of advertising, marketing and sales figures, the Panel makes no finding that the mark is famous, it does find that the mark is highly distinctive and that it has achieved some level of renown, at least in the United States, based on the Complainant’s submissions. Considering the length of time that the Complainant’s mark and products and services have been in the marketplace prior to the date of registration of the Disputed Domain Name and the highly distinctive nature of the BURT’S BEES mark, the Panel infers that the Respondent did not register the Disputed Domain Name by coincidence, but rather did so in bad faith.
The Respondent’s use of the Disputed Domain Name differs from classical parking page cases in that it does not resolve to a page containing links to the web pages of competing or associated products or services, nor to a single competing website. Rather, the Respondent has engineered, or at the least authorised, a system which appears to divert Internet users to different websites on each occasion, featuring competing or associated products or services. In this Panel’s view this amounts to the intentional diversion of Internet users which the Panel infers is more than likely for the Respondent’s or someone else’s commercial gain and as a result amounts to conduct described under paragraph 4(b)(iv) of the Policy as being evidence of registration and use in bad faith. Previous panels have found that it is immaterial whether this conduct is for a respondent’s or some other party’s financial gain (for example, see Roust Trading Ltd, v, AMG LLC, WIPO Case No. D2007-1857, citing Express Scripts Inc. v. Windgather Investments Limited/Mr. Cartwright,WIPO Case No. D2007-0267 and Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912).
As noted under the second element above, the use of a privacy or identity shield in this case further supports a finding that the Respondent has acted in bad faith. Although privacy shields may be legitimate in some cases, where, as in this case the Disputed Domain Name at issue fully encompasses the Complainant’s reputed mark and has obviously been used to divert Internet users in terms of paragraph 4(b)(iv) of the Policy, then it seems more likely than not that the Respondent is using a privacy shield to mask its true identity in an attempt to facilitate cybersquatting as was also the case in Ustream.TV. v. Vertical Axis, lnc., WIPO Case No. D2008-0598.
For all these reasons the Panel finds that the Respondent has both registered and used the Disputed Domain Name in bad faith and that the Complaint succeeds under the third element of the Policy. 7. Decision
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 be transferred to the Complainant.
Alistair Payne
Sole Panelist
Dated: December 18, 2011
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