The Complainant is Roraj Trade LLC of Los Angeles, California, United States of America (“United States” or “US”), represented by Holland & Knight LLC, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States / Fan Yu Chun of Chengdu, China.
The disputed domain name <fentybeautyshop.com> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2018. On June 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 8, 2018 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 amended Complaint on June 8, 2018.
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 June 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2018.
The Center appointed Christian Schalk as the sole panelist in this matter on July 20, 2018. 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 Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The language of the proceeding is English.
The Complainant is a company owned by one the most famous contemporary music artist, also known as “Rihanna” with 230 million records sold worldwide. In 2012, this artist has been ranked among the most powerful celebrities by the Forbes magazine and the Time magazine included her on its annual list of the most influential people. In 2015, she was chosen as the new “Face of Dior” and therewith the first black women ever selected.
The Complainant markets cosmetics under the brand names FENTY BEAUTY and FENTY BEAUTY BY RIHANNA through a licensed manufacturer and distributor named Fenty Beauty LLC, and its parent company, Kendo Holdings, Inc.
The Complainant’s FENTY products where first launched in September 2017 during New York Fashion Week and are available in stores or online in at least 15 countries. During the first months, FENTY BEAUTY recorded USD 72 million in earned media value. In addition, the Complainant markets its FENTY BEAUTY branded beauty products also via Twitter. The Complainant’s Twitter account “@fentybeauty” has around 279,000 followers.
The Complainant owns among others the following trademark registrations:
- US trademark registration No. 5397059 FENTY BEAUTY BY RIHANNA, application date March 14, 2016, registration date February 6, 2018; covering goods in International Class 3;
- US trademark registration No. 5408127 FENTY BEAUTY BY RIHANNA, application date March 14, 2016, registration date February 20, 2018; covering goods in International Class 21;
- European Union trademark registration No. 15065031 FENTY BEAUTY, application date February 2, 2016, registration date May 24, 2016, covering goods in International Classes 3 and 25;
The disputed domain name was registered by the Respondent on December 22, 2017.
The disputed domain name resolves to a website where the Complainant’s trademarks are featured in a prominent manner on the upper left. Below, a picture of Rihanna covers major parts of the left side of the upper website. Next to this picture and below, various cosmetic products are offered for sale which appear to be very similar if not nearly identical to the products offered by the Complainant on its website at the domain name <fentybeauty.com> where the composition of picture and products is nearly the same.
The Complainant alleges that the disputed domain name is confusingly similar to its FENTY BEAUTY mark since it has been formed by appropriating the Complainant’s FENTY BEAUTY mark and adding the descriptive or generic word “shop” and the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states in this context that the Respondent has not used the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. The Complainant explains that it has not authorized the Respondent to use or register the word combination FENTY BEAUTY as a trademark or name and that there is no connection between the parties. The Complainant states further:
- that the Respondent registered the disputed domain name three months after the Complainant’s high profile launch of the FENTY BEAUTY cosmetics brand during the New York Fashion Week in September 2017;
- that the website to which the disputed domain name resolves features a prominent display of Complainant’s stylized FENTY BEAUTY BY RIHANNA logo at the head of the page, photographs of the Complainant’s FENTY BEAUTY cosmetic products and a copyright notice that reads “Copyright 2017 Fenty Beauty”;
- that the Respondent has copied elements of the Complainant’s website at the domain name <fentybeauty.com> with only minor changes and falsely and repeatedly identify the Complainant’s related company Kendo Holdings, Inc. as a source of the Respondent’s website;
- that the US addresses of Kendo Holdings are provided for contact purposes although the Respondent is located in China.
Therefore, the Complainant concluded that the Respondent is attempting to pass off the website to which the disputed domain name resolves as a website of the Complainant.
The Complainant argues also that the Respondent is selling counterfeit copies of the Complainant’s FENTY BEAUTY branded products through the website to which the disputed domain name refers. Therefore, the Complainant had alerted consumers in an article published in the TeenVogue magazine on May 24, 2018 and via Twitter. The Complainant explains in this context that the only retail outlets for genuine FENTY BEAUTY branded products are Sephora, the British department store Harvey Nichols, and the Complainant’s website at the domain name <fentybeauty.com>.
The Complainant believes in addition that the Respondent is not commonly known by the disputed domain name, and that the Respondent has made no legitimate and noncommercial or fair use of the disputed domain name.
The Complainant alleges furthermore, that the disputed domain name was registered and is being used in bad faith. The Complainant states in this context that the Respondent is using the disputed domain name in connection with a deceptive website to sell counterfeit copies of the Complainant’s FENTY BEAUTY branded cosmetics to consumers for the Complainant’s genuine products. The Complainant believes further that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source of the Respondent’s website and the products on the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
The Panel finds that the Complainant has established trademark rights in the trademark FENTY BEAUTY. The disputed domain name is nearly identical to the Complainant’s trademark FENTY BEAUTY.
As it has been decided by previous UDRP panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see, for instance, Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702; Casa Editorial El Tiempo, S.A. v. Montanya Ltd, WIPO Case No. D2009-0103; Todito.com, S.A. de C.V. v. Francisco Gómez Ceballos, WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). The disputed domain name features the word combination “fenty beauty” in its entirety.
Furthermore, in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark does not prevent a finding of confusing similarity (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan, WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002).
As set out in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. Therefore, the addition of the term “shop” does not prevent a finding of confusing similarity with the Complainant’s trademark.
Furthermore, the gTLD “.com” in the disputed domain name does not affect the determination that the disputed domain name is identical or confusingly similar to the Complainant’s trademark FENTY BEAUTY in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein). It is well-established that gTLDs such as “.com” is generally disregarded when determining if there is identity or confusing similarity. Where a domain name incorporates a complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy (see Sportsdirect.com Retail Limited v. Nicole Missell and Dreamless Brand, WIPO Case No. D2015-1946 and Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105).
For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.
Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
It is the consensus view of UDRP panels that once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0); Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; and Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark. The Respondent has also not rebutted the Complainant’s allegations and has not provided the Panel with any explanations as to the Respondent’s rights or legitimate interests.
The Respondent has directed the disputed domain name to a website which features branding elements of the Complainant’s website, images of the owner of the Complainant and it offers products which look like the products offered on the Complainant’s website. There is a strong likelihood that such a website leads Internet users searching for the Complainant’s products away from the Complainant.
Therefore, the only reason for the Respondent to register the disputed domain name was, on balance, to capitalize on the Complainant’s goodwill by redirecting Internet traffic intended for the Complainant away from it. Such behaviour cannot constitute a bona fide or legitimate use of the disputed domain name.
In this case, the word “shop” is a common term in the English language. This term is used to describe the alleged purpose of the website to which the disputed domain name resolves, namely, offering for sale Complainant’s products.
Furthermore, searches for the term “fenty beauty” in a search engine such as Google revealed only the Complainant’s business on the first page. The Panel is therefore convinced that the Respondent was aware of the Complainant when it registered the disputed domain name and that the Fenty Beauty brand has been chosen by the Respondent in order to create an impression of an association with the Complainant (see also: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of a domain name:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of the 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 disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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 its website or location or of a product or service on its website or location.
The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its products when it registered the disputed domain name. The website to which the disputed domain name resolves features branding elements and images of the Complainant’s website at the domain name <fentybeauty.com>. The Panel’s own searches in search engines such as Google or Bing showed the Complainant and its business in a prominent manner. Therefore, the Panel is convinced that the Respondent was aware of the Complainant when it registered the disputed domain name.
The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.
The use, to which the disputed domain name is put, namely to a website which pretends the offering for sale of products of the Complainant is calculated to attract Internet users to the Respondent’s website in the mistaken belief that they are visiting a site of or associated with the Complainant. This website shows in a prominent manner a picture of the owner of the Complainant and displays branding and design elements which are identical or at least nearly identical to those shown on the Complainant’s website at the domain name <fentybeauty.com>. The cosmetic products offered for sale are apparently no genuine products of the Complainant but look like such products. It is difficult even for well-informed Internet users to recognize that the website to which the disputed domain name resolves is neither an authorized source for purchasing the Complainant products nor there is any kind of relation between this website and the Complainant.
Therefore, the Panel is convinced that the Respondent’s main purpose was to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Furthermore, the Respondent has apparently also provided inaccurate contact details when it registered the disputed domain name or failed at least to correct such false contact details. The Center has used the contact details given in the WhoIs record for the disputed domain name and those provided by the Registrar when it tried to contact the Respondent. However, the courier service provider could not reach the Respondent in order to deliver the Written Notice of the Complaint. Therefore, the Panel notes that the Respondent may have given incorrect contact details to frustrate or at least to delay this proceeding (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Given all the facts and circumstances of this case, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <fentybeautyshop.com> be transferred to the Complainant.
Christian Schalk
Sole Panelist
Date: August 3, 2018