The Complainant is BeSweet Creations LLC of Oakland Park, Florida, United States of America (“United States”, represented by CMS Cameron McKenna Nabarro Olswang LLP, United Kingdom.
The Respondent is Ahmed Aludayni of Bayt Baws, Yemen. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2019. On February 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 2019, the Registrar 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 the Complainant on February 13, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 14, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on February 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2019.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on March 13, 2019. 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 United States company incorporated in Florida in May 2015 who manufactures and offers for sale a brand of gummy vitamins ‘under the brand “Sugar Bear Hair”.
The Complainant is the registered owner of numerous registered verbal trademarks worldwide consisting of the term SUGARBEARHAIR, amongst others United States Trademark Registration No. 4985290 (registered on June 21, 2016) and European Union Trademark No. 015466691 (registered on November 23, 2016) registered for goods and services in classes 5 and 35, respectively.
According to the Registrar’s verification response, the Respondent registered the disputed domain name on November 10, 2018. The language of the registration agreement is English.
Finally, the Panel notes that the disputed domain name connects to a website which mimics the Complainant’s website, showing the Complainant’s registered trademarks and allegedly offering the Complainant’s products for sale. 5. Parties’ Contentions A. Complainant
The Complainant submits that since the first launch of its first Sugar Bear Hair vitamin product in November 2015, it has sold a large number of its products in virtually every country and region in the world, including the Middle‑East. By way of example, the Complainant contents that as at November 2018, it had achieved sales in the United Kingdom alone in excess of GBP 2,100,000. According to the Complainant has spent in excess of USD 12,000,000 on marketing on the Facebook, Instagram, and Google platforms alone since the inception of the Complainant company. Furthermore, the Complainant has over 2.3 million and over 1.35 million followers on the Instagram and Facebook social media networks, respectively.
The Complainant contends that the disputed domain name is confusingly similar to its SUGARBEARHAIR trademarks. In particular, the trademarks SUGARBEARHAIR are wholly and identically incorporated in the disputed domain name as its dominant part. In creating the disputed domain name, the Respondent has merely added the descriptive element “ye”, which is a reference to the country of Yemen.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the Complainant’s marks. According to the Complainant, the Respondent illegitimately exploits the images and other intellectual property rights belonging to the Complainant by effectively mirroring the Complainant website on its own website. Thus, the Respondent makes illegitimate commercial and unfair use of the disputed domain name for commercial gain to misleadingly divert Internet users and to tarnish the Complainant’s trademarks. Finally, the Complainant believes the goods sold on the website, to which the disputed domain name resolves, to be counterfeit.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. In its view, the Respondent intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement. In addition, the Respondent has positively been aware of the Complainant’s marks and products since he displays the figurative and verbal marks and offers products bearing these marks on its website to which the disputed domain name resolves. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has provided evidence that it is the registered owner of various trademark registrations consisting of the verbal element SUGARBEARHAIR and respectively registered for goods and services in classes 5 and 35, amongst others United States Trademark Registration No. 4985290 (registered on June 21, 2016) and European Union Trademark No. 015466691 (registered on November 23, 2016). These trademarks predate the creation date of the disputed domain name, which is November 10, 2018.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainS, Inc.,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademark SUGARBEARHAIR is fully included in the disputed domain name.
Finally, it is the view of this Panel that the combination of the trademarks SUGARBEARHAIR with the element “ye” does not avoid the confusing similarity between the disputed domain name and the Complainant’s trademarks. This term “ye” is the two-letter country abbreviation for the country of Yemen, where the Respondent is domiciled. It will therefore be understood as a mere geographic term.
Hence, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks pursuant to the Policy, paragraph 4(a)(i). Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name:
According to the Complaint, which has remained unchallenged, the Complainant has not authorized the Respondent’s use of the trademarks SUGARBEARHAIR, e.g., by registering the disputed domain name comprising said marks entirely.
Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
Finally, it results from the Complainant’s undisputed allegations that the disputed domain name is connected to a website, which mimics the Complainant website, showing the Complainant’s registered trademarks and allegedly offering the Complainant’s products for sale. The Panel assesses this use as being commercial, so that it cannot be considered a legitimate, noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. Furthermore, such use cannot be qualified a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy since it rather has a high propensity to mislead and divert consumers. The Panel observes that the Respondent’s website contains no disclaimer and states at the foot of the landing page “Sole Agent And Exclusive In Yemen Ahmed Shawky Trading Group”. As the Complainant confirms that the Respondent is not affiliated with the Complainant nor an authorized vendor, the Panel finds that the Respondent does not accurately and prominently disclose the Respondent’s relationship with the Complainant (see section 2.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Previous UDRP panels have found that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
One of these circumstances is that the respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 (paragraph 4(b)(iv) of the Policy).
It is the view of this Panel that these circumstances are met in the case at hand.
It results from the Complainant’s documented allegations that the disputed domain name is connected to a website, which mimics the Complainant website, showing the Complainant’s registered trademarks and allegedly offering the Complainant’s products for sale. For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s marks. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain name included the Complainant’s trademarks when it registered the disputed domain name. Registration of the disputed domain name which contains a third party’s mark, in awareness of said mark and in the absence of rights or legitimate interests amounts to registration in bad faith (see e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320).
The finding of bad faith registration and use is supported by the further circumstances resulting from the case at hand which are (i) the Respondent’s failure to submit a response; (ii) his failure to provide any evidence of actual or contemplated good-faith use, (iii) the implausibility of any good faith use to which the domain name may be put, and (iv) the Respondent concealing its identity behind a privacy shield (see section 3.3 of the WIPO Overview 3.0).
In the light of the above the Panel finds that the disputed domain name has been registered and are being used in bad faith pursuant to paragraph 4(a)(iii) 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.
Tobias Malte Müller
Sole Panelist
Date: March 26, 2019
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