ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Skims Body, Inc. v. Christina Buzas Case No. D2023-4794 1. The Parties The Complainant is Skims Body, Inc., United States of America (“United States”), represented by Pearne & Gordon, LLP, United States. The Respondent is Christina Buzas, United States. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2023. On November 20, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 2023, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 21, 2023, 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 amendment to the Complaint on the same day. The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2023. The Respondent sent two email communications to the Center on November 22, 2023, expressing uncertainty about how to respond to the emails regarding the disputed domain name. Accordingly, the Center notified the Commencement of Panel Appointment on January 4, 2024.
page 2 The Center appointed Evan D. Brown as the sole panelist in this matter on January 15, 2024. 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 in the business of selling clothing and other products. It owns the mark SKIMS and variations of that mark used in conjunction with other words on and in connection with its goods and services. The Complainant enjoys the benefits of registration of several of its marks, including for the word mark SKIMS in the United States (Reg. No. 6754965, registered on June 7, 2022). According to the WhoIs information, the disputed domain name was registered on October 23, 2023. On the same day the disputed domain name was registered, the Complainant officially announced the launch of its men’s line under the brand SKIMS MENS. The Respondent has not used the disputed domain name to publish an active website. Instead, the disputed domain name has been used to point to a Registrar-provided parked page containing advertisements, including advertisements for goods sold in competition with the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not provide any substantive response to the Complaint. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (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 finds that all three of these elements have been met in this case. A. Identical or Confusingly Similar This first element functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. Id. This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and second, whether the disputed domain name is identical or confusingly similar to that mark. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the SKIMS mark by providing evidence of its trademark registrations.
page 3 The disputed domain name incorporates the SKIMS mark in its entirety, with the term “mens”, which does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s SKIMS mark. See WIPO Overview 3.0, section 1.8. The SKIMS mark remains recognizable for a showing of confusing similarity under the Policy. Accordingly, the Panel finds that the Complainant has satisfied this first element under the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. On this point, the Complainant asserts, among other things, that: (1) the Complainant has not authorized the Respondent to use its marks in a domain name or in any other manner, (2) the Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services, (3) the Respondent is not using the disputed domain name in a legitimate noncommercial manner, and (4) the Respondent is trying to capitalize on the reputation and goodwill in the Complainant’s mark. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent registered the disputed domain name on the same day that the Complainant announced its new branding, styled SKIMS MENS. The disputed domain name incorporates the words of the new brand verbatim. This is strong evidence that the Respondent targeted the Complainant and its marks when registering the disputed domain name and, in the absence of any explanation from the Respondent as to why it registered the disputed domain name, leads the Panel to conclude that the Respondent registered the disputed domain name in bad faith. As for bad faith use, Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of
page 4 the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the composition of the disputed domain name, discussed above, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. The Panel finds that the Complainant has established 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. /Evan D. Brown/ Evan D. Brown Sole Panelist Date: January 29, 2024
Full & Egal Universal Law Academy