The Complainant is Cult Beauty Limited, United Kingdom, represented by Dechert LLP, United Kingdom.
The Respondents are Luxe Pharma, Italy, and Bárbara Cañuelo Cuesta, Business Advertising Service LLC, Italy. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2021. On January 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. Furthermore, the Registrar informed the Center that the language of the registration agreement is Spanish. The Center sent an email communication to the Complainant on January 12, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint and to address the matter concerning the language of the proceedings. The Complainant filed an amended Complaint on February 13, 2021 and confirmed its request for English to be the language of the administrative proceedings having nothing further to add. 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 January 18, 2021. The Center received an email communication from the Respondent’s technical contact on January 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2021. Accordingly, the Center notified the parties of the commencement of the Panel appointment process on February 10, 2021. The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on February 24, 2021. 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 was founded in 2007 and operates worldwide in the retail of beauty products and supplies. The Complainant owns the following trademark registrations, among others: MARK REGISTRATION NUMBER REGISTRATION DATE CLASSES JURISDICTION CULT BEAUTY 4709986 March 31, 2015 3 United States of America CULT BEAUTY 4378248 September 30, 2011 4, 8, 9, 14, 18, 21, 25, 28, 35, 44, and 45 United States of America CULT BEAUTY UK000030322733 April 4, 2014 3 United Kingdom CULT BEAUTY 10304715 November 14, 2013 4, 8, 9, 14, 18, 21, 25, 28, 35, 44, and 45 European Union CULT BEAUTY 1195792 February 13, 2014 3 International trademark designating Spain and Italy, among others The Complainant owns the domain names The disputed domain names The record shows that on November 24, 2020, the first disputed domain name resolved to a web site that purported to operate, or soon to operate, an online beauty retail business. At the time of the filing of the Complaint, the first disputed domain name did not resolve to a live web site. Likewise, the record holds that since December 03, 2020 and up to the date when this decision was rendered, the second disputed domain name resolved to a parked web site. 5. Parties’ Contentions A. Complainant The Complainant asserted the following: That it is a 2007 British-American founded business that operates worldwide in the trade of beauty products and supplies, along with the offering of beauty features, tips, and celebrity beauty secrets. That it has amassed a number of awards and business recognitions that have vested its CULT BEAUTY brand with substantial reputation and goodwill. That the first disputed domain name was registered on October 26, 2020, while the second disputed domain name was registered on November 24, 2020. That the disputed domain names are identical or confusingly similar to the trademark CULT BEAUTY. That the disputed domain names incorporate the CULT BEAUTY trademark in its entirety and are confusingly similar to said trademark because they are comprised of the words “cult” and “beauty” in their respective alternating order, along with minor additions such as the letter “e” at the end of the word “cult” and the generic Top-Level Domain (“gTLD”) “.com”. That the first disputed domain name is confusingly similar to the CULT BEAUTY trademark as it merely switches the order of the words and adds the letter “e” at the end of the word “cult”. That the second disputed domain name entirely incorporated the CULT BEAUTY trademark, with the addition of the letter “e” at the end of the word “cult”. That the Respondent has no rights or legitimate interests in respect of the disputed domain names. That it has not granted license or otherwise permitted or authorized the Respondent to use its trademark, or to apply for a domain name incorporating said trademark. That the dates of registration of its trademarks predate the date of registration of the disputed domain names, and that therefore, it is reasonable to assume that the Respondent did not independently conceive of the name Cult Beauty and was aware of the Complainant and its rights and reputation at the time that the disputed domain names were registered, and hence had constructive knowledge of the Complainant’s trademark. That in the case of the first disputed domain name the Respondent intended to use the web site to which it resolved to directly compete with the Complainant, considering that the content thereof was removed only after the Respondent received the Complainant’s cease and desist letter. That in the case of the second disputed domain name, it resolved to a parked page which featured the concerned Registrar’s services. That the Respondent chose to register the disputed domain names because the trademark CULT BEAUTY is well known and associated with the Complainant; that using said disputed domain names would result in the diversion of traffic to the Respondent’s web site, or that it could persuade the Complainant to purchase the disputed domain names for an amount in excess of the Respondent’s out-of-pocket expenses. That given the Respondent’s behavior after having received the cease-and-desist letter sent by the Complainant, it is probable that the Respondent selected the Complainant’s trademark for its domain names to trade off the reputation of the Complainant. That it is not possible to conceive of any plausible use of the disputed domain names that would not be illegitimate. That the Complainant registered the disputed domain names to unfairly benefit from the Complainant’s rights in its trademark. That the Respondent registered the first disputed domain name with the intention to promote goods and services that are similar or identical to the goods and services being offered by the Complainant. That the Respondent’s primary intent is to trade off the value of the Complainant’s trademark. That the Respondent had the intention to lead consumers to believe that, when exposed to the disputed domain names, they had reached the Complainant’s web site, and thus divert traffic from the Complainant, thereby interfering with the Complainant’s business. That it is probable that, at the time of registration of the disputed domain names, the Respondent also had the intention of selling the disputed domain names to the Complainant for valuable consideration in excess of her out-of-pocket expenses. That the Respondent initially operated the first disputed domain name to intentionally attract users to her web site for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of her products or web sites. That the Respondent has also used the Cult Beauty name in a way likely to dilute the reputation of the Complainant’s trademark and as such is evidence of bad faith. That the disputed domain names are not being used for any legitimate purpose. That both disputed domain names are being passively held. B. Respondent The Respondent did not reply to the Complainant’s contentions. The technical contact of the first disputed domain name sent an email communication on January 20, 2021 informing that the Respondent was aware of the Complaint and that the Respondent would like to transfer the first disputed domain name, The language of the Registration Agreement for the disputed domain names is Spanish. 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”. According to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the language of the proceeding can be different to that of the registration agreement in cases where the respondent can understand the language of the complaint. In the present case, the Complainant submitted its Complaint in English, and has requested that the language of the proceedings to be English. The Complainant contends that the Respondent must be familiar with the English language since (i) the disputed domain names are composed of English words, (ii) both of the disputed domain names have resolved to web sites that contain information and contents in English, and (iii) the Respondent’s answers to the Complainant’s November 10, 2020 cease and desist letter was written in English. The Panel further notes that no objection was made by the Respondent to the proceeding being held in English nor any request made that the proceedings be conducted in Spanish, the language of the Registration Agreement. The case file shows that the Respondent has communicated with the Complainant in English, which evidences that the Respondent can understand the language of the Complaint, and of this proceeding. Therefore, and considering the spirit of the Policy, which is to make available a simple, expeditious, cost‑effective dispute resolution model, the Panel will allow the proceedings to be conducted in English. II. Discussion and Findings The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and In view of the Respondent’s failure to submit a formal Response, the Panel may decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules (see General Mills, Inc., v. Velgut Group Business and Intl Commerce, S.A. de C.V., WIPO Case No. DMX2012-0013; Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009; Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784; and International Hospitality Management IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683; and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar The Complainant has filed evidence showing that it owns registrations for the trademark CULT BEAUTY in multiple classes which cover products and services related to cosmetics and beauty supplies worldwide. The disputed domain names incorporate the Complainant’s trademark CULT BEAUTY in its entirety. Both disputed domain names include a letter “e” at the end of the word “cult”: Such inclusion of the letter “e” in both disputed domain names, and the alternation of order between the words “cult” and “beauty” in the first disputed domain name do not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademark. Therefore, the disputed domain names are confusingly similar to the Complainant’s trademark (see section 1.7 of the WIPO Overview 3.0; see also Alfred Dunhill, Inc. v. Registration Private, Domains By Proxy, LLC / Abdullah Altubayieb,WIPO Case No. D2017-0209; Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,WIPO Case No. D2003-0793; F. Hoffmann-La Roche AG v. Softech Ltd., DNS Administrator (gold),WIPO Case No. D2007-1699; and F. Hoffmann-La Roche AG v. P Martin,WIPO Case No. D2009-0323). The addition of the gTLD “.com” to the disputed domain names constitutes a technical requirement of the Domain Name System (“DNS”), and therefore has no legal significance in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO,WIPO Case No. D2020-0268; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc.,WIPO Case No. D2014-1919). In light of the above, the first element of the Policy has been met. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name: (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 domain name in connection with a bona fide offering of goods or services; or The Complainant has asserted that it has not licensed or otherwise permitted our authorized the Respondent to use its trademark CULT BEAUTY, or to apply for a domain name incorporating said trademark. The Respondent did not rebut this allegation. The Respondent has not submitted evidence showing that she has been commonly known by the disputed domain names, or that she is making a legitimate noncommercial or bona fide use of them. The Complainant has made a prima facie case showing that the Respondent lacks rights to or legitimate interests in the disputed domain names. Therefore, the burden of production to demonstrate rights or legitimate interests in the disputed domain names falls on the Respondent, who in this case has failed to ascertain them (see sections 2.1 and 2.2 of the WIPO Overview 3.0, see also Harpo, Inc. and Oprah’s Farm, LLC v. Robert McDaniel,WIPO Case No. D2013-0585; Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000‑0009). The record shows that the first disputed domain name resolved to a web site that contained texts suggesting that it would soon operate an online beauty retail business. This message was shortly removed after the Complainant delivered a cease and desist letter to the Respondent. This use of the first disputed domain name would imply a direct competition with the Complainant (see section 2.2 of the WIPO Overview 3.0, see also Harpo, Inc. and Oprah’s Farm, LLC v. Robert McDaniel,WIPO Case No. D2013-0585; Autodesk, Inc. v. Brian Byrne, meshIP, LLC,WIPO Case No. D2017-0191). Regarding the second disputed domain name, the record shows that it resolves to a “parked” web site. Absent any Response filed by the Respondent, the Panel finds nothing in the case file to support a finding that the Respondent has any rights or legitimate interests in the disputed domain names (see OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org,WIPO Case No. D2015-1149). Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Bad faith under the Policy is broadly understood to occur where a respondent aims to take advantage of or otherwise abuses a complainant’s mark. According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or has 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 your 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 online 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. The Complainant owns registrations for the trademark CULT BEAUTY in various jurisdictions, including Spain and Italy, where the Respondent has declared to have her domicile. The Complainant has proven that it has a worldwide operation and a widespread brand presence. Therefore, it is reasonable to infer that the Respondent was aware of the Complainant, its trademark, reputation, and products and services at the time when the disputed domain names were registered, which suggests opportunistic bad faith (see section 3.2.1 of the WIPO Overview 3.0; see also Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003: Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226). The use of the web site to which the first disputed domain name resolved shows that the Respondent attempted to either compete with the Complainant and its business or take advantage of the similarity of the first disputed domain name with the Complainant’s trademark. The Respondent has given the impression that the disputed domain name was associated with or endorsed by the Complainant (see Philip Morris Products S.A. v. Domain Administrator, Registrant of iqosatismaganiz.com (apiname com) / Anl Girgin, Teknoloji Sarayi,WIPO Case No. D2019-0466; Self-Portrait IP Limited v. Franklin Kelly, WIPO Case No. D2019-0283). Therefore, the Respondent’s conduct has created a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation, or endorsement of the web site to which the first disputed domain name resolved, which translates into bad faith use under paragraph 4 (b)(iv) of the Policy (see 1IQ PTY LTD v. 1337 Services LLC,WIPO Case No. D2017-2156; Facebook, Inc., WhatsApp Inc. v. Wisdom King, Wizindo,WIPO Case No. D2019-2517). Additionally, the inactive use of the first disputed domain name only after the Respondent received the Complainant’s cease and desist letter does not prevent a finding of bad faith. The second disputed domain name resolved to a parked page promoting the Registrar’s services, which in the circumstances of the case amounts to registration and use in bad faith under the Policy. The Panel notes the similarities between both disputed domain names and the Complainant’s trademark, and finds likely that the Respondent had the same intention for both disputed domain names (noting that the Respondent could easily use the second disputed domain name for the same purpose as the first disputed domain name). The Panel also notes that the Respondent has not participated in the proceeding, and has failed to indicate any facts and/or evidence which would show the good faith registration and use of the second disputed domain name. In its response to the Complainant’s cease and desist letter, the Respondent merely said “that we can negotiate the sale of the domain www.beautyculte.com and cultebeauty.com.” Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15of the Rules, the Panel orders that the disputed domain names, Kiyoshi Tsuru
(ii) the Respondent has no rights or legitimate interests with respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did no acquire trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Sole Panelist
Date: March 10, 2021
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