Exclusive Beauty Club, LLC v Domains By Proxy, LLC, United States /
WIPO Case No. D2022-2374
•25-08-2022
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Exclusive Beauty Club, LLC v. Domains By Proxy, LLC, United States /
Leah Parks, Parks Avenue, United States
Case No. D2022-2374
1. The Parties
The Complainant is Exclusive Beauty Club, LLC, United States of America (“United States”), represented by
Berger Singerman LLP, United States.
The Respondent is Domains By Proxy, LLC, United States / Leah Parks, Parks Avenue, United States.
2. The Domain Name and Registrar
The disputed domain name <exclusivebeauty.com> (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 June 29, 2022. On June 30, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 1, 2022, 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 July 4 2022, 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 July 4, 2022. The Center received an email communication from the Respondent on July 4, 2022.
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 July 8, 2022. In accordance with the Rules, paragraph 5,
the due date for Response was July 28, 2022. The Center received an online submission from the
Respondent on July 26, 2022. The Center notified the commencement of Panel appointment process on
August 4, 2022.
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The Center appointed Lynda M. Braun as the sole panelist in this matter on August 11, 2022. 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 boutique e-retailer located in Florida that offers a curated catalog of premium skin care collectively as the “EXCLUSIVE BEAUTY Mark”; and EXCLUSIVE BEAUTY CLUB and design, United States Serial No.90,872,962, filed on August 9, 2021, in international classes 18 and 35 (office action pending).
and beauty products. The Complainant owns the following trademark registrations with the United States
Patent and Trademark Office: EXCLUSIVE BEAUTY CLUB and design, United States Registration No.
5,394,132, registered on February 6, 2018; in international class 35; indicating as first use in commerce
July 13, 2016; EXCLUSIVE BEAUTY and design, United States Registration No. 5,794918, registered on
The Complainant owns the domain name <exclusivebeautyclub.com>, which resolves to the Complainant’s official website at “
The Disputed Domain Name was created on February 14, 2004, and was acquired later on (probably in entity called “Exclusive Beauty”. The owner of the website, listed on the “About page” at “ is “Leah”, with no last name provided. The Disputed Domain Name resolves to a Facebook page that provides <skinbeautifulrx.com> as its domain name and provides “[…]@skinbeautifulrx.com” as the contact email address. The website at “ states that “Exclusive Beauty” is its skincare spa in the Columbus, Ohio area.
2020, and at least after May 10, 2018,[1] for which the Respondent purportedly paid a significant price to the
[1] The Panel notes that according to the WhoIs history provided by the Complainant, in May 10, 2018 the WhoIs listed an entity located
5. Parties’ Contentions
A. Complainant
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark or trademarks.
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- the Disputed Domain Name was registered and is being used in bad faith.
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant
in accordance with paragraph 4(i) of the Policy.
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B. Respondent
The Respondent submitted a reply to the Complainant’s contentions on July 26, 2022 as follows:
- At first the Respondent requested that the Panel deny the remedy requested by the Complainant.
- The Respondent then stated it was unaware of the existence of the similarly-named domain name.
- Finally, the Respondent acknowledged that it would cancel the use of the Disputed Domain Name,
although it would not transfer ownership of the Disputed Domain Name to the Complainant.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights; and
(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.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the EXCLUSIVE BEAUTY Mark as set forth below.
It is uncontroverted that the Complainant has established rights in the EXCLUSIVE BEAUTY Mark based on
its several years of use plus its registered trademarks for the EXCLUSIVE BEAUTY Mark. The consensus
view is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption
that the mark is inherently distinctive”. CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case
No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the
Complainant has rights in the EXCLUSIVE BEAUTY Mark. Moreover, the registration of a mark satisfies the
threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section
1.2.1.
The Disputed Domain Name consists of the EXCLUSIVE BEAUTY Mark in its entirety and then followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be identical or confusingly similar to that trademark for purposes of the Policy.
Further, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Panel concludes that the Disputed
Domain Name is identical or confusingly similar to the Complainant’s EXCLUSIVE BEAUTY Mark.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the
Complainant.
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B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the
Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the
Respondent to use the Complainant’s EXCLUSIVE BEAUTY Mark.
Further, the Complainant does not have any business relationship with the Respondent and based on the use made of the Disputed Domain Name to resolve to a Facebook page that provides <skinbeautifulrx.com> as its domain name and provides “[…]@skinbeautifulrx.com” as the contact email address, the Respondent has not submitted any evidence that it was making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services using the Disputed Domain Name.[2] See Policy, paragraph 4 (c).
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel notes that the website at the Disputed Domain Name seems to be operated by an entity named “Exclusive Beauty”, and the Panel notes that the Complainant submitted a certificate by the State of Ohio according to which the Respondent is listed as the registered agent for “Exclusive Beauty LLC”, originally filed on August 29, 2020. However, the Panel notes that the Complainant’s EXCLUSIVE BEAUTY Mark predates such registration as a listed agent, and there is no explanation or evidence submitted by the Respondent regarding the identity of “Exclusive Beauty LLC” but rather the Respondent appears to go by “skinbeautifulrx” online and on social media. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the
Complainant.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy.
The Panel notes that the Respondent acquired the Disputed Domain Name after the registration of the Complainant’s EXCLUSIVE BEAUTY CLUB trademark, and from the evidence after the registration of the EXCLUSIVE BEAUTY trademark (in this regard the Panel refers to the discussion in the Factual Background of this decision). The Panel also notes the Respondent seems to be operating a business under the domain name <skinbeautifulrx.com> in the beauty sector (selling beauty products through an ecommerce website). While the Respondent claims that the Disputed Domain Name was “purchased for the use of marketing medspa services” and “not for the purpose of ecommerce product sales” (which is what the Complainant provides), the Panel finds both uses may be easily connected, and that both Parties operate in the same general sector. In addition, the Panel notes that the website at the Disputed Domain Name prominently refers to products under the brands “iS Clinical”, “PCA Skin”, and “Osmosis”, and that “PCA Skin”, and “Osmosis” are brands commercialized by the Complainant on its website.
While the Disputed Domain Name combines two dictionary terms, associated with the beauty sector, the mark and services. These circumstances would indicate that the Respondent had the Complainant in mind
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when it acquired the disputed domain name, and has used it to take unfair advantage of the confusing
similarity with the Complainant’s EXCLUSIVE BEAUTY Mark.
Moreover, the current inactive or passive holding of the Disputed Domain Name by the Respondent (as here) does not prevent a finding of bad faith. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a trademark without a legitimate purpose may indicate that the disputed domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574. Here, the Disputed Domain Name resolves to a landing page with no content, and considering the previous use of the Disputed Domain Name, the Panel notes that the current passive holding does not prevent a finding of bad faith under the Policy.
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the
Complainant.
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 <exclusivebeauty.com> be transferred to the Complainant.[3]
/Lynda M. Braun/
Lynda M. Braun
Sole Panelist
Date: August 25, 2022
in Spain (with a name and address different to the Respondent), and the disputed domain name was registered with the registrar results showed a privacy service as the registrant during 2019 and part of 2020, the Panel notes the change of registrar to the current one and the change of the name servers on October 6, 2020, which was the first time the Respondent Parks Avenue appeared listed as the registrant organization for the Disputed Domain Name.
circumstances, and thus has concluded that the Disputed Domain Name should be transferred to the Complainant.
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