ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Forest & Shore Ltd v. Haus Media, Haus Media Case No. D2024-3894 1. The Parties The Complainant is Forest & Shore Ltd, United Kingdom, represented by Briffa Legal Limited, United Kingdom. The Respondent is Haus Media, Haus Media, United States of America. 2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2024. On September 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 24, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Redacted for Privacy, Privacy Service Provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 25, 2024, 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 September 30, 2024. 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 October 2, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2024. The Respondent did not file a Response but on October 23, 2024, sent an email communication to the Center. In this communication the Respondent offered to transfer the Domain Name upon reaching an agreement with the Complainant. The Complainant
page 2 did not take any steps to reach agreement with the Respondent. As the Respondent’s October 23, 2024, communication was not an express unconditional consent to transfer the Domain Name the Panel considers it appropriate to proceed to a substantive decision on the merits. On November 4, 2024, the Center notified the Parties that it would proceed to panel appointment. The Center appointed Nicholas Smith as the sole panelist in this matter on November 8, 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 a United Kingdom company, established in 2016, that creates and sells luxury hair products under the trademark THRIVE HAIR OIL (the “THRIVE HAIR OIL Mark”). The Complainant offers its products through various means including from its website at “www.forestandshore.co.uk” and a specialist page at Amazon.com. The Complainant has held a trademark registration for the THRIVE HAIR OIL Mark in the United Kingdom since 2022 for hair care products in class 3 (registration No. UK00003708634). The Domain Name was registered on April 9, 2024. The Domain Name is presently inactive but prior to the commencement of the proceeding the Domain Name resolved to a website (the “Respondent’s Website”) that purported to offer hair care products in direct competition with the Complainant (being products of identical colour and in identical bottles as those sold by the Complainant with the THRIVE HAIR OIL Mark removed). The terms of service for the Respondent’s Website stated that the website was operated by “Thrive Hair Oil”. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. Notably, the Complainant contends that: a) It is the owner of the THRIVE HAIR OIL Mark, having registered the THRIVE HAIR OIL Mark in the United Kingdom. The Domain Name is identical to the THRIVE HAIR OIL Mark as it merely adds the generic Top-Level-Doman (“gTLD”) “.com” to the mark. b) There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the THRIVE HAIR OIL Mark. The Respondent is not commonly known by the THRIVE HAIR OIL Mark, nor does it use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Respondent is using the Domain Name to pass off as the Complainant for commercial gain by purporting to offer hair care products in direct competition with the Complainant. Such use is not a legitimate use of the Domain Name. c) The Domain Name was registered and is being used in bad faith. The Respondent is using the Domain Name to divert Internet users searching for the Complainant to the Respondent’s Website to disrupt the Complainant’s business and divert Internet users searching for the Complainant to a competing website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the Domain Name. Accordingly, the Domain Name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the first element of the Policy has been established. 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. Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the 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 Domain Name. The Panel considers that the record of this case reflects that: - before any notice to the Respondent of the dispute, the Respondent did not use, nor has it made demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Paragraph 4(c)(i) of the Policy, and WIPO Overview 3.0, section 2.2. - the Respondent (as an individual, business, or other organization) has not been commonly known by the Domain Name. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3. - the Respondent is not 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. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4.
page 4 - the record contains no other factors demonstrating rights or legitimate interests of the Respondent in the Domain Name. The Respondent’s use of the Domain Name to resolve to a webpage purporting to offer hair care products in direct competition with the Complainant, under the “THRIVE” mark and actively asserting that it is “Thrive Hair Oil” does not amount to use for a bona fide offering of goods and services. This conduct amounts to the Respondent passing itself off as the Complainant. It appears that the purpose behind the Respondent’s Website is to encourage visitors, under the impression that they are dealing with the Complainant, to purchase the hair care products purportedly offered by the Respondent, such conduct not being a bona fide offering of goods and services. 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. The Panel considers that the record of this case reflects that 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. Paragraph 4(b)(iv) of the Policy, and WIPO Overview 3.0, section 3.1.4. The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the THRIVE HAIR OIL Mark at the time the Respondent registered the Domain Name. The Respondent has provided no explanation, and neither it is immediately obvious, why an entity would register a domain name that is identical to the THRIVE HAIR OIL Mark and redirect it to a website offering hair care products in direct competition with the Complainant while actively asserting that the website was operated by “Thrive Hair Oil” unless there was an awareness of and an intention to create a likelihood of confusion with the Complainant and its THRIVE HAIR OIL Mark. The Respondent passes off as the Complainant and purports to offer hair care products in direct competition with the Complainant on the Respondent’s Website. The Panel finds that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the THRIVE HAIR OIL Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. The current inactiveness of the Domain Name does not prevent a finding of bad faith. 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 Domain Name be transferred to the Complainant. /Nicholas Smith/ Nicholas Smith Sole Panelist Date: November 13, 2024
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