WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BA&SH v. Privacy Protect, LLC / Xin Yu Khor, Bash Clothing
Case No. D2020-3516
1. The Parties
The Complainant is BA&SH, France, represented by Cabinet Bouchara, France.
The Respondent is Privacy Protect, LLC, United States of America (“United States”) / Xin Yu Khor, Bash Clothing, Malaysia.
2. The Domain Names and Registrars
The disputed domain name <bashclothing.co> is registered with Web Commerce Communications Limited dba WebNic.cc.
The disputed domain name <bashshitever.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2020. On December 24, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On December 25, 2020 and December 26, 2020, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 4, 2021 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 January 5, 2021. On January 7, 2021, and January 16, 2021, the Respondent sent three informal email communications. On January 18, 2021, the Center noted that the total size of the Complaint (including annexes) exceeded 50 MB. On January 18, 2021, the Complainant submitted a second amended Complaint.
On January 18, 2021, the Center noted that there appeared to be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request on appointment.
The Center verified that the Complaint together with the amended Complaints 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 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2021. On February 6, 2021 and February 8, 2021, the Respondent requested an extension of the Response due date. On February 8, 2021, the Center exceptionally granted the extension of time until February 18, 2021.
The Response was filed with the Center on February 17, 2021.
On February 17, 2021 and February 18, 2021, the Complainant and the Respondent sent email communications. On February 22, 2021, the Center received the Complainant’s Supplemental Filing. On February 26, 2021, the Respondent commented on the Complainant’s Supplemental Filing.
The Center appointed Luca Barbero as the sole panelist in this matter on March 2, 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
Founded in 2003, the Complainant is a French company that operates in the field of design, manufacture and distribution of ready to wear goods for women as well as fashion accessories.
The Complainant has provided evidence of ownership of the International trademark registration No. 923450 for BA&SH (figurative mark), registered on January 24, 2007, in international classes 3, 14, 18 and 25; and of the European Union trademark registration No. 5679758, for BA&SH (figurative mark), filed on January 30, 2007 and registered on February 10, 2012, in international classes 3, 14, 18 and 25.
The Complainant is also the owner of the domain names <ba-sh.sg>, registered on September 27, 2010, and <ba-sh.com> registered on November 9, 2004. The Complainant operates its main website at <ba-sh.com>, which is used by the Complainant to promote and sell its products under the trademark BA&SH.
The disputed domain names <bashshitever.com> and <bashclothing.co> were registered respectively on March 22, 2014 and September 14, 2020. The disputed domain name <bashshitever.com> currently redirects to the e-commerce website at <bashclothing.co>, where the Respondent is advertising and offering for sale ready to wear products under the trademark BASH.
5. Parties’ Contentions
A. Complainant
The Complainant contends that disputed domain names <bashshitever.com> and <bashclothing.co> are confusingly similar to the trademark BA&SH in which the Complainant has rights as they reproduce the trademark in its entirety, with the mere addition of the dictionary terms “shit” “ever” and “clothing” and the generic Top-Level Domain “.com” and the country code Top-Level Domain “.co”.
In addition, the Complainant highlights that, besides being a generic term, “clothing” is directly associated with the Complainant’s main activity under the BA&SH trademark, that is, the manufacture and sales of clothes and accessories. In this sense, the addition of “clothing” would only further contribute to creating confusing similarity of the disputed domain name with the Complainant’s trademarks.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain names, since it does not own any rights to the trademark it reproduces in the disputed domain names and it has not obtained any authorization, on any ground, to reproduce or imitate the Complainant’s trademarks within a domain name.
In addition, the Complainant contends that the Respondent is in no way related to the Complainant even if the Respondent intends to suggest the opposite in the intent to capitalize on the Complainant’s notoriety.
Indeed, the use of the disputed domain name <bashshitever.com> to direct Internet users to another website, in itself would demonstrate that the Respondent has no legitimate interests in such disputed domain name.
Furthermore, the Complainant asserts that the Respondent could not have ignored the Complainant’s trademarks at the time it registered the disputed domain names since its trademark is so widely known and the Complainant had already been highly active throughout the world, including in Singapore since 2005, where the Respondent seems to operate.
In addition to the above, the Complainant highlights that it is the owner since 2010 of the domain name <ba-sh.sg>, used to redirect users to its main website “www.ba-sh.com”, where consumers can purchase ready to wear products under the Complainant’s trademark and have them delivered worldwide, including Singapore. The Complainant also claims to be notoriously known on social networks under the pseudonym “bashparis” and provides a screenshot of its Instagram account “bashparis” “followed” by more than 730,000 people.
Lastly, the Complainant points out that the trademarks have a meaning of their own and cannot simply be invented since they are made up by the initials of their founders Barbara Boccara and Sharon Krief, so it would be hard to believe that the Respondent could have invented the terms when registering the disputed domain names.
With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering that the Respondent was most likely aware of the Complainant at the time of registering the disputed domain names and that the Respondent was most likely riding on the Complainant’s worldwide reputation, in order to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks for commercial gain, the registrations were undoubtedly performed in bad faith.
The Complainant emphasizes that the disputed domain name <bashclothing.com> strictly reproduces, without authorization, the Complainant’s trademark on all its pages, highly suggesting that the Respondent may in some way, have been sponsored or affiliated to the Complainant, which is untrue.
Moreover, the Complainant underlines that the use of the website to sell and promote the same type of products as the Complainant under the same trademark and without the Complainant’s authorization, constitutes bad faith registration.
B. Respondent
The Respondent replied to the Complainant’s contentions, denying all the Complainant’s allegations and asserting that the disputed domain names are in fact not identical or confusingly similar to the Complainant’s trademark.
The Respondent further contends that it is an honest and concurrent user of the common law trademark BASH CLOTHING in Malaysia since 2013 and that is business was founded by Cecilia Ooi and Khor Xin Yu on December 23, 2013 when they were 18 years old.
The Respondent states that its founders decided to start their own little online business since they were both shopping and fashion enthusiasts and sought to launch their products at first on free social networks due to limited budget.
The Respondent asserts that the choice of name which lead to using the term BASH was the result of a brainstorming session lead by the Respondent who was seeking to find a name that would catch on particularly with a target of young university students in mind. Considering the definition of the term “bash” and the fact that their aim was to promote and sell youthful, trendy and affordable clothing, they ended up choosing the terms use “bash shit ever”, reflected in the disputed domain name <bashshitever.com> for 5 years and in September 2020, they decided to change their brand name as they found that it no longer suited their target audience and their brand image, thus they changed it into “bashclothing” and registered the second disputed domain name <bashclothing.co>.
The Respondent highlights that they started delivering in Singapore in July 2017 which was more than 3 years after their brand was established and asserts that they would not have been aware of the fashion industry in Singapore and would thus not have been able to “free-ride” on the Complainant’s alleged reputation in Singapore.
Moreover, the Respondent underlines that the Complainant’s trademarks have a meaning of their own since they take up the initials of their founders, thus it is clear that BA&SH does not mean “party” or “best”, which proves that the Respondent had no intention of cornering the Complainant in any way.
Lastly, the Respondent emphasizes that, if shown side by side, the Complainant’s website and the Respondent’s website bear no similarities, starting from the brand logo which is distinctly different and the fact that they used a single English word as a brand and not a combination of initials separated by a ampersand. Such circumstances should help to disconnect any form of sponsorship, affiliation or endorsement from the Complainant’s brand for any visitor, especially those who are familiar with the Complainant’s brand.
With reference to rights or legitimate interests in respect of the disputed domain names, the Respondent states that “Bash Clothing” is the Respondent’s company name and trade name and that such company has been registered with the Companies Commission of Malaysia since 2015.
With reference to the circumstances evidencing bad faith, the Respondent indicates that, considering the Complainant has no physical or e-commerce presence in Malaysia, it is impossible for them to be aware of the Complainant’s activities and trademarks in Malaysia (if any).
The Respondent also submits that the disputed domain names were not registered in bad faith since their website and social media content bear no resemblance and that the Complainant and the Respondent are targeting different segments of consumers and countries, since apparently the Complainant does not ship to Malaysia or Singapore and neither countries appear in the store locations on their website. Moreover, the Respondent underlines that the consumer demographic is also notably different as the Respondent’s products are priced only in Malaysian Ringgit and have always been below EUR 42.
The Respondent further points out that they have never concealed their identity upon registering the disputed domain names, have never intended to register the disputed domain names with the intent to sell them, nor have they registered the two disputed domain names to target the Complainant’s trademark in any way.
C. Complainant’s Supplemental Filing
On February 22, 2021, the Complainant sent a Supplemental Filing rebutting that the Respondent should have verified that the disputed domain names would not have infringed the rights of any third party, before registering and that failure to do so should be seen as a contributory factor to its bad faith.
The Complainant further contends that contrary to what the Respondent stated in its Response, the Complainant’s trademarks are actively exploited both in Singapore and in Malaysia and provides a list of official resellers delivering in those territories both online and in physical stores in Singapore.
The Complainant underlines that its trademarks have been registered almost 10 years before the registration of the Respondent’s company and it cannot allow third parties to create such a significant risk of confusion on the Internet by using its trademarks identically, to offer ready to wear products, which is exactly what the Complainant does.
D. Respondent’s Supplemental Filing
The Respondent requested that the Complainant’s Supplemental Filing be disregarded.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
6.1. Supplemental Filings
Before entering into the merits of the case, the Panel addresses the issue of the unsolicited supplemental filings submitted by the Parties to the Center.
No provision concerning supplemental filings are made in the Rules or Supplemental Rules, except at the request of the panel according to paragraph 12 of the Rules, which states the panel, in its sole discretion, may request any further statements or documents from the parties it may deem necessary to decide the case.
According to paragraph 10 of the Rules, the Panel has the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition, ensuring that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), unsolicited supplemental filings are generally discouraged – unless specifically requested by the panel – and the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response.
Accordingly, UDRP panels generally accept supplemental filings only when they provide material new evidence or a fair opportunity to respond to arguments that could not reasonably have been anticipated. See, along these lines, Welcomemat Services, Inc. v. Michael Plummer Jr., MLP Enterprises Inc., WIPO Case No. D2017-0481.
In the case at hand, the Panel notes that the Complainant’s Supplemental Filing offers rebuttal to the Respondent’s arguments that the Complainant did not use its trademark BA&SH in Singapore and Malaysia and includes other allegations about the Respondent’s rights in the trademark BA&SH and a registrant’s duty to perform searches before finalizing a domain name registration.
The Panel notes that none of the Respondent’s arguments in the Response were unforeseeable and finds that the Complainant’s supplemental submission is not grounded on evidence that was not available to the Complainant when the Complaint and the Amended Complaint were filed.
In view of the above and since the Complainant has not demonstrated the presence of any exceptional circumstance required for admitting a supplemental filing, the Panel has decided not to consider the Complainant’s supplemental filing. Nevertheless, the Panel notes that, should the Panel have admitted the Complainant’s supplemental filing, the outcome of the case would have been the same.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights over the trademark BA&SH based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annexes 12 and 13 to the Complaint.
As highlighted in section 1.7 of the WIPO Overview 3.0, the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
In the case at hand, the denominative element which characterizes the Complainant’s trademark BA&SH is entirely reproduced in the disputed domain names, with the mere exclusion of the ampersand between the letters “ba” and “sh”, the addition of the words “shit” “ever” and “clothing” and the generic Top-Level Domain “.com” and the country code Top-Level Domain “.co”, which can be disregarded under the first element confusing similarity test (sections 1..8 and 1.11 of the WIPO Overview 3.0).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to the registered trademark in which it has established rights as prescribed by paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial 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.”
In the case at hand, the Complainant states that the Respondent was not authorized to use the Complainant’s trademark, has not been commonly known by the disputed domain names and has not been using the disputed domain names in connection with a bona fide offering of goods or services or in connection with a legitimate noncommercial or fair use.
The Respondent has rebutted the Complainant’s contentions stating that it has a legitimate interest in the disputed domain names since it registered them without intending to target the Complainant and its trademark. As mentioned above, the Respondent stated that the name “bash” was selected by its founders in 2013 due to its meaning (“party or social event”) which recalled the term “best” and was initially used in the expression “Bash shit ever” as a pun on words to launch and identify the Respondent’s e-commerce fashion website mainly aimed at a target of young students selling clothing at affordable prices. As also shown in the screenshot of the Respondent’s Instagram profile attached to the Response, after promoting its business through its social media account, on May 16, 2015, the Respondent registered the disputed domain name <bashshititever.com> for use in connection with its dedicated e-commerce website.
The Respondent also stated that, in a second moment, about 5 years later, the Respondent opted to use another domain name for its website i.e. the disputed domain name <bashclothing.co>, as the former name “Bash shit ever” no longer suited its brand image and the new target market, beyond university students.
The Respondent provided excerpts from an article and a post on a social media dated September 2018 and July 2019 in which the origin of the Respondent’s name was explained in the terms described above. In addition, the Respondent provided incorporation documents issued by the Companies Commission of Malaysia for its company Bash Clothing dated April 8, 2015.
In view of the above and considering that i) the Respondent appears to have been operating mainly in Malaysia since 2015 whilst the Complainant has provided no evidence of the actual use of its trademark BA&SH in such country, and ii) the Respondent has provided a plausible explanation and supporting documents about the reason of its selection of the sign BASH due to the meaning of the dictionary term “bash” (which also supports why it evolved to a shorter version of the brand), and also used a logo which differs from the Complainant’s trademark BA&SH, the Panel finds that the record appears to support that the Respondent came with the name independently of the Complainant’s trademark, and has been using the disputed domain names in connection with an apparent bona fide offering of its products on the correspondent websites for the purposes of the Policy.
Furthermore, the Complainant claims that it has commercialized its products in Singapore, where it claims the Respondent operates. However, there is no evidence before the Panel of the extent of Complainant’s trading or promotion in Singapore (and neither in Malaysia) at the time of the registration of the first disputed domain name by the Respondent (noting that <bashshitever.com> was registered on March 22, 2014). Considering the plausible explanation provided by the Respondent around the selection of its brand, and that the burden of proof relies on the Complainant, the Panel finds that there is not sufficient evidence to conclude under the Policy that the Respondent selected its name to take advantage of the Complainant’s business or trademark.
Therefore, the Panel finds that the Complainant has failed to discharge the burden of proof according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain names were registered and are being used by the Respondent in bad faith.
For the reasons detailed in section 6.1.C above, the Panel finds that the Respondent, on balance on probabilities, registered and used the disputed domain names without intending to target the Complainant and its trademark.
The Panel notes that, based on the Complainant’s submissions, at the time the first disputed domain name <bashshitever.com> was acquired by the Respondent, the Complainant had been trading in France and worldwide for some 11 years and had been the proprietor of the International trademark for some 7 years. However, as mentioned above, the Complainant has failed to submit any evidence of actual use of its trademark BA&SH in Malaysia, where the Respondent is based, at the time of registration of the first disputed domain name. In addition, a Google search for “bash” shows several results unrelated to the Complainant and its mark and, as mentioned above, the Respondent provided a plausible explanation of the reason why it selected the term “bash”, corresponding to an English dictionary term. The combinations of the rest of the terms added to “bash”(i.e. “shit” and “ever”) within the first disputed domain name further supports the plausibility of the reasoning provided by the Respondent around the adoption of the Respondent’s name.
Moreover, despite the parties operate in the same market segment (i.e. ready to wear clothing and accessories), the use of the disputed domain names made by the Respondent does not show an intention to trade-off the Complainant and its trademark for the purposes of the Policy, in view of the different logo and layouts, the significantly lower prices at which the Respondent’s clothes are offered for sale and the absence of any information on the Respondent’s website which might induce users to believe that the website be operated by the Complainant or one of its affiliated entities.
In view of the above, the Panel finds that the Complainant has also failed to demonstrate that the Respondent registered and used the disputed domain names in bad faith according to paragraph 4(a)(iii) of the Policy.
7. Decision
For the foregoing reasons, the Complaint is denied.
Luca Barbero
Sole Panelist
Date: March 19, 2021