The Complainant is Birchbox, Inc. of New York, New York City, United States of America (“United States”) represented by Ken Kwartler Law Office, United States.
The Respondent is Nabil Sabet of Bentleigh, Victoria, Australia.
The disputed domain name <birchbox.com.au> is registered with Crazy Domains Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2012. On December 21, 2012, the Center transmitted by email to Crazy Domains Pty Ltd a request for registrar verification in connection with the disputed domain name. On December 25, 2012, Crazy Domains Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2013. The Response was filed with the Center on January 13, 2013.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on February 4, 2013. 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.
The disputed domain name was registered on May 26, 2011.
The Complainant is a corporation established in the United States in 2010. Its business is subscription based offering monthly gift boxes of high-end beauty and lifestyle products, the sale of discounted products and the provision of consumer response data to manufacturers and suppliers in the beauty and lifestyle goods business. It has achieved rapid success and international press coverage in the relevant sections of newspapers and magazines including The New York Times, Women's Wear Daily, Forbes, Crains, Cosmopolitan, Glamour, Vogue, People, Us, Seventeen, InStyle, Esquire, USA Today and Time Magazine.
The Complainant holds registrations of the trademark BIRCHBOX dating, in the United States, from April 19, 2011 and, in Australia and several other countries dating from July 5, 2011.
In 2012 the disputed domain name was listed on the domain name auction site "Flippa" under the heading:
“Birchbox,com.au – Australian domain name for a hit business model inspired by USA” and with the description:
“Birchbox disrupted the cosmetics industry in the USA with its subscription model. They have raised $11.9 million in funding to date and are a huge success. The space is wide open in Australia. Domain offered to the highest bidder.”
On October 10, 2012 the Respondent sent to the Complainant an email reading:
“Birchbox.com.au is up for sale publicly on https://flippa.com/2828443-birchbox-com-au-australian-domain-for-a-hit-business-model-inspired-by-usa.
I am the seller. I also have an extensive list of Australian contacts and the names of their marketing and brand managers and contact details, as well as market specific information – from a foray into this business model earlier.
Contact me directly if you are interested. Sale ends in 60 days.”
The Complainant contends that:
- It has an international reputation in its name and trademark BIRCHBOX.
- BIRCHBOX is an arbitrary word having no dictionary definition and is not a descriptive term.
- The disputed domain name comprises exactly the Complainant’s name and trademark BIRCHBOX and essentially nothing more and the Respondent’s sole aim in registering the disputed domain name is to sell it to the highest bidder.
- The Respondent has no rights or legitimate interests in the disputed domain name. He has not made any use of the disputed domain name for the bona fide offering of goods or services, is not commonly known by the disputed domain name and has not made any legitimate noncommercial or fair use of the disputed domain name. The only activity of the Respondent in relation to the disputed domain name was to offer it for sale to others, including to the Complainant, with the purpose of profiting from the notable and growing popularity of the Complainant’s business and BIRCHBOX trademark.
- The Respondent has knowingly deprived the Complainant of the use of the disputed domain name in Australia and has thereby disrupted the Complainant’s business and activities.
The Respondent asserts that:
- he registered the disputed domain name before the Complainant registered its trademark in Australia;
- he has never sold a domain name and is not in the domain name selling business;
- he intended to use the disputed domain name but did not do so and decided to sell it;
- he contacted the Complainant and informed it of the auction as a gesture of goodwill;
- the Complainant is “trying to strongarm control over a domain that is not theirs”.
The Complainant has established rights in its name and trademark BIRCHBOX dating from prior to the date of registration of the disputed domain name. The disputed domain name comprises exactly the Complainant’s name and trademark with the addition of the generic Top Level Domain (“gTLD”), “.com”. The addition of the gTLD typically does not affect the identity of the domain name (Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).
The Panel therefore finds that the disputed domain name is identical to a name, trademark or service mark in which the Complainant has rights.
The Respondent does not dispute the Complainant’s contentions that he is not commonly known by the disputed domain name, has not made any bona fide use or preparation for use of the disputed domain name in the sale or offering for sale of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent’s only claim to rights or legitimate interest in the disputed domain name appears to rest on the fact that he registered it before the Complainant’s mark was registered in Australia. In the Panel’s view, that, however, is not sufficient. By May 2011, the Complainant had been trading, highly successfully, in the United States for some time and had registered its trademark in April 2011. The fact that, as the Complainant points out, the word "birchbox" is an arbitrary and otherwise meaningless word, strongly suggests to this Panel that the Respondent had the Complainant’s name and trademark in mind when he registered the disputed domain name. Subsequent listing of the disputed domain name for sale and its promotion by reference to the success of BIRCHBOX in the United States confirms that suggestion. In the Panel’s view, deliberate misappropriation of another’s trademark cannot found rights or legitimate interests. Further, the Policy (auDRP) unlike the UDRP, specifically provides in paragraph 4(c)(i), that offering of a domain name acquired for the purpose of sale to another person does not constitute a bona fide use.
The Panel therefore finds that the Respondent has no right or legitimate interests in the disputed domain name.
Paragraph 4(a)(iii) of the Policy is satisfied by showing either that the disputed domain name was registered in bad faith or that it was subsequently used in bad faith. In the Panel’s view, the contents of the advertisement for sale of the disputed domain name and the Respondent’s email of October 10, 2012 clearly indicate that the Respondent then knew of the Complainant and of the reputation the Complainant had established in its name and mark, and that he wished to capitalize on that reputation. The disputed domain name was offered for sale to the highest bidder notwithstanding the Respondent’s knowledge of the Complainant’s rights. In the Panel’s view, this was an act of bad faith whether or not that was the purpose for which the disputed domain name was registered and whether or not it literally falls within the category of bad faith as set out in paragraph 4(b)(i) of the Policy. As noted by the learned panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003:
“It must be recalled that the circumstances identified in paragraph 4(b) are "without limitation" – that is, paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith”.
(see also Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574).
It is also apparent to the Panel that the Respondent’s registration of a domain name of which the only distinguishing feature is the Complainant’s name and mark will have the effect of preventing the Complainant from reflecting that name and mark in a corresponding domain name.
In the light of the above finding it is unnecessary to consider whether or not the Respondent acted in bad faith at the time of registration of the disputed domain name. Nevertheless the Panel finds, on the balance of probability, that he did so. All the Respondent says is that he “intended to make use of it, but never did, so decided to sell it, …”. He does not say how he intended to use it but in all the circumstances it must be assumed that the use would be one which appropriated and benefited from the attractive power of the Complainant’s name and mark.
The Panel therefore finds that the disputed domain name was registered or has been used in bad faith.
For all 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 <birchbox.com.au> be transferred to the Complainant.
Desmond J. Ryan AM
Sole Panelist
Date: February 18, 2013