The Complainant is Cult Beauty Limited, United States of America, represented by Dechert, United Kingdom.
The Respondent is REG.RU Protection Service/Mark Usov, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2020. On June 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2020, 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 June 16, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The same day, June 16, 2020, the Respondent sent an email stating it was ready to transfer the disputed domain name. The Center transmitted an email regarding possible settlement on June 18, 2020. The Complainant requested that the proceeding be suspended whilst the Parties explored settlement options. The proceeding was suspended on June 19, 2020, a further extension was granted to August 18, 2020. As no settlement was reached, the proceeding was reinstituted. The Complainant filed an amended Complaint and requested English to be the language of proceeding on August 18, 2020. The Respondent did not submit comments on the Complainant’s language request. 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 in English and Russian, and the proceedings commenced on August 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2020. The Respondent did not submit any response. The Center appointed Taras Kyslyy as the sole panelist in this matter on September 23, 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 Rules, paragraph 7. 4. Factual Background The Complainant is an online retailer that sells beauty products on its website, “www.cultbeauty.co.uk”. The Complainant owns several domestic and international trademark registrations for its CULT BEAUTY mark, including European Union registration No. 10,304,715, registered November 14, 2013, United States of America registration No. 4,709,986, registered March 31, 2015, and International Registration No. 1,195,792, registered February 13, 2014. The Complainant ships products to eighty-five countries, including India. As a result of the Complainant’s international presence, the Complainant has received numerous awards and press coverage. Several hundred thousand individuals follow each of the Complainant’s social media accounts. The disputed domain name was registered on April 20, 2020, and resolved to a website in the Russian language selling cosmetics and beauty products. As at the date that the Complaint was re-filed following disclosure of the registrant details, the website at the disputed domain name was suspended (seemingly due to insufficient funds on account). 5. Parties’ Contentions A. Complainant The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name consists of the trademark in its entirety and the generic Top-Level Domain suffix “.site” which has no trade mark significance but instead is a descriptive and non-distinctive word which would be treated by the general public as being perfectly applicable to the Complainant and would even be expected to be used by, or in relation to the Complainant particularly, since the Complainant operates an online retail business. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent chose the disputed domain name specifically because it is confusingly similar to the Complainant’s trademark associated with the Complainant. Accordingly, the Respondent’s use and registration of the disputed domain name cannot constitute use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services. The disputed domain name was used to promote goods and services which are identical or confusingly similar to those covered by the Complainant’s rights under the Complainant’s trademark, and such use cannot be considered as a bona fide offering of goods or services. There is no obvious reason why the disputed domain name has been selected by the Respondent, leading to the suggestion that it was selected to trade off the reputation of the Complainant’s trademark. The Respondent failed to address cease and desist letter of the Complainant. The Respondent used the disputed domain name for commercial purposes, thus it is not making legitimate noncommercial or fair use of the disputed domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. The Respondent registered the disputed domain name confusingly similar to the Complainant’s trademark, thus in no circumstances would any use of the disputed domain name by the Respondent constitute its legitimate or fair use unless it was authorized by the Complainant. Any use of the disputed domain name would take unfair advantage of the Complainant’s rights in the Complainant’s trademark and misleadingly divert users to the Respondent’s website instead of the Complainant’s website. Such use is neither a legitimate nor a fair use of the disputed domain name. The Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark or to apply for a domain name incorporating it. The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name in order to unfairly benefit from the Complainant’s trademark. The Respondent has registered the disputed domain name primarily for the purpose of disrupting the Complainant’s business. The Respondent has operated the disputed domain name intentionally to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its websites or a product or service on its website. The disputed domain name has been used in a way that is likely to dilute the reputation of the Complainant’s trademark and as such is evidence of bad faith. The disputed domain name was registered over 13 years after the Complainant was founded and started trading under its trademark and the Complainant has substantial goodwill and reputation in its trademark. Accordingly, in the absence of any legitimate interests in the disputed domain name, the registration of the disputed domain name by the Respondent cannot have been in good faith. The Respondent had at least constructive, if not actual, knowledge of the Complainant’s trademark when the Respondent registered the disputed domain name and since then. It is not possible to conceive of any plausible use of the disputed domain name by the Respondent that would not be illegitimate, such as by passing off or an infringement of the Complainant’s rights under trademark law. B. Respondent The Respondent did not reply to the Complainant’s contentions. In its informal communication of June 16, 2020, the Respondent suggested to sell the disputed domain name for US D200. 6. Discussion and Findings A. Language of Proceedings The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated. However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334). In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties. According to section 4.5.1 of the WIPO Overview 3.0 previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement. The Complainant has submitted a request that the language of the proceedings be English. The Panel notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference, but did not do so. The Panel further notes that the Respondent is located in the United States of America with English as a primary communication language. In its informal communication on the matter the Respondent used English language. The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian. Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. B. Identical or Confusingly Similar The Panel finds that the Complainant has rights in its registered trademark. The addition of the gTLD “.site” does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 , in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds this applies to the present case. Considering the above the Panel finds the disputed domain name is identical to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name. The Complainant did not license or otherwise agree for use of its prior registered trademark by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875). The Panel notes that at the time of this decision the disputed domain name resolves to an inactive webpage. In the circumstances of this case, the Respondent has no right or legitimate interests in the disputed domain name resolving to an inactive website (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore,WIPO Case No. D2016-1302). The Respondent’s previous use of the confusingly similar disputed domain name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use pursuant to Policy. (See, e.g., Option One Mortgage Corporation v. Option One Lending,WIPO Case No. D2004-1052). Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith According to section 3.2.2 of the WIPO Overview 3.0, “noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”. The Panel finds that in the present case relevant circumstances including incorporation of the known Complainant’s trademark in the disputed domain name and its further use for offering overlapping goods, confirm the Respondent knew and targeted the Complainant and its trademark when registering the disputed domain name, which is conduct in bad faith. According to section 3.1 of the WIPO Overview 3.0 , bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s 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 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 the respondent’s 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 the respondent’s website or location or of a product or service on the respondent’s website or location. In this regard, the Panel finds that at least the fourth of the above scenarios apply to the present case confirming the Respondent’s bad faith. Although at the time of this decision the disputed domain name resolves to inactive webpage, its previous bad faith use and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain name implausible. Thus, the current passive holding of the disputed domain name does not prevent a finding of bad faith (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman),WIPO Case No. DPW2017-0003). Moreover, the Respondent failed to respond to the Complainant’s cease and desist letter, and did not provide any good reason to justify this, which confirms the bad faith (see, e.g., Compagnie Generale des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022). The Respondent ignored its possibility to comment to the Complaint and provide any explanations to prove its good faith while registering and using the disputed domain name. Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under 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, Taras Kyslyy
Sole Panelist
Date: September 27, 2020
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