AthenaCosmetix.com UDRP: X marks the decision spot

Athena Cosmetics, Inc. of California filed a UDRP to get the domain AthenaCosmetix.com from its British registrant.

Despite the obvious phonetic matching between the two companies, the Complainant’s own products do not carry the company’s names:

Complainant has failed to prove any rights, registered or common law, in the ATHENA COSMETICS mark. It has not been used by Complainant as a trademark but only as its entity name. Virtually all of its advertising has been of its brand names, particularly Revitalash and Revitabrow.

The Respondent noted that the Complainant’s C&D letter sent prior to filing the UDRP was “bullying” in its tone. The panel affirmed that.

The three member panel found that the Respondent’s registration and use of the domain has been consistent with their formation of a business in the UK and their subsequent registration of the ATHENA COSMETIX mark.

Final decision: Deny the transfer of the domain AthenaCosmetix.com to the Complainant. The Respondent’s request for a finding of Reverse Domain Name Hijacking was denied.

Athena Cosmetics, Inc. v. Athena Cosmetix / Athenacosmetix

Claim Number: FA2412002130735

PARTIES

Complainant is Athena Cosmetics, Inc. (“Complainant”), represented by Marina Lang of SoCal IP Law Group, LLP, California, USA. Respondent is Athena Cosmetix / Athenacosmetix (“Respondent”), represented by Adam Taylor of Adlex Solicitors, United Kingdom.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is athenacosmetix.com, registered with Tucows Domains Inc.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

Michael A. Albert, Panelist

Nick J. Gardner, Panelist

Charles A. Kuechenmeister, Chair

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 20, 2024; Forum received payment on December 20, 2024.

On December 22, 2024, Tucows Domains Inc. confirmed by e-mail to Forum that the athenacosmetix.com domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 26, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of January 21, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@athenacosmetix.com. Also on December 26, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on January 20, 2025.

On January 28, 2025, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, Forum appointed Michael A. Albert and Nick J. Gardner as Panelists and Charles A. Kuechenmeister as Chair.

On January 29, 2025 Respondent filed an unsolicited Additional Submission consisting of a trademark registration certificate issued by the United Kingdom Intellectual Property Office on January 25, 2025 to Respondent for the ATHENA COSMETIX mark. Considering that this document was not available until after the time for filing a Response had elapsed and is relevant, the Panel considered this submission

On February 6, 2025, Complainant filed an unsolicited Additional Submission, which was accepted and considered by the Panel.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant sells cosmetic products in all major markets since as early as 2005. It has rights in the ATHENA COSMETICS mark in that it is the registered proprietor of the ATHENA COSMETICS trademarks with particular emphasis on eyelash and eyebrow cosmetics and the relevant public has come to associate the ATHENA COSMETICS brand with the goods supplied by Complainant. Respondent’s athenacosmetix.com domain name is identical or confusingly similar to the ATHENA COSMETICS mark as it fully incorporates the ATHENA COSMETICS mark except that it substitutes the letter “x” for the letters “cs,” which renders it phonetically identical, and adds the “.com” generic top-level domain (gTLD).

Respondent has no rights or legitimate interests in the domain name. It failed to respond to Complainant’s cease-and-desist letter, it is passing off and posing as Complainant, and it is not an authorized dealer of Complainant’s products and Complainant has not licensed or authorized Respondent to use its mark.

Respondent registered and uses the domain name in bad faith. It attempts to attract for commercial gain Internet users to its website by creating confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, where it sells counterfeit products, by diverting customers from Complainant’s website through the confusingly similar domain name it is disrupting Complainant’s business, and it registered the domain name with actual and constructive knowledge of Complainant ‘s rights in its marks.

B. Respondent

Respondent’s founder is Ms Athena Denielle Todd. In January 2022 she selected her ATHENA COSMETIX tradename based upon her first name and for stylistic reasons changed the last two letters in the COSMETICS element to x. She organized the Respondent company in September of 2022 and registered the domain name the following April of 2023. She was not aware of Complainant when she registered the domain name and had no reason to be aware of it. In October 2024 Complainant sent her a cease-and-desist letter. This was the first time she became aware of Complainant or any dispute it might have had with her about the domain name. She ignored the letter because it was baseless and because of its bullying tone.

Complainant has failed to prove any rights, registered or common law, in the ATHENA COSMETICS mark. It has not been used by Complainant as a trademark but only as its entity name. Virtually all of its advertising has been of its brand names, particularly Revitalash and Revitabrow.

Before she learned of the dispute on October 9, 2024, Respondent had been using Athena Cosmetix as the entity and trade name of her business since January 2022 and she has used the domain name in connection with her business since she registered it in April 2023. She has thus been commonly known by that name since January 2022.

Respondent was not aware of Complainant or its alleged ATHENA COSMETICS mark when she registered the domain name and did not target Complainant. Respondent’s website does not pass off as Complainant. Its advertising is aimed at the beauty trade, whereas Complainant’s marketing is directed toward consumers, and its products are named Athena Cosmetix, as distinguished from those advertised by Complainant under the Revitalash and Revitabrow brands.

FINDINGS

Paragraph 15(a) of the Rules instructs this Panel to “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 requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The Panel finds as follows with respect to the matters at issue in this proceeding.

Identical and/or Confusingly Similar

In support of its claim of rights in the ATHENA COSMETICS mark Complainant submitted a list prepared by Complainant of what it says are its trademark registrations with governmental trademark agencies throughout the world (Complaint Annex 2). The list is just over three single-spaced, fine-print pages long, listing alleged trademarks, names of registering agencies, and registration dates and numbers. Among the many entries on this list is a United States registration of the ATHENA COSMETICS mark. Some members of this Panel regard the list as nothing more than a self-serving declaration that has no evidentiary value. Other members are prepared to accept the list as accurate, and one of them independently verified by consulting a United States Patent and Trademark (USPTO) search engine that Complainant does in fact own a USPTO registration for the ATHENA COSMETICS mark. Complainant’s registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).

Respondent’s athenacosmetix.com domain name is identical or confusingly similar to Complainant’s ATHENA COSMETICS mark. It fully incorporates the mark, merely substituting the letters “cs” in the COSMETICS element with an “x,” omitting the space and adding a gTLD. These changes do not distinguish the domain name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”), AM General LLC v. Ashkan Shirafkan, FA 1863659 (Forum Oct. 7, 2019) (“[T]he Complaint claims that the additional letters “i” or “x” does not distinguish the domain name from Complainant’s HUMVEE trademark. The Panel accepts that the additional letter does not alter the underlying trademark or negate the confusing similarity and it does not sufficiently differentiate the disputed domain name from that trademark.”). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 1.7, states that the 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 domain name.” The WIPO Overview is not a definitive statement of applicable law which governs any particular issue, but it does express a consensus among a significant number of UDRP panelists as to how particular issues typically are and should be resolved. This Panel accepts that consensus on this and other issues addressed later in this Decision. Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the domain name.

For the reasons set forth above, the Panel finds that the domain name is identical or confusingly similar to the ATHENA COSMETICS mark, in which Complainant has rights.

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

(i) Before any notice to the respondent of the dispute, the respondent’s 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;

(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) The respondent is 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.

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because (i) it failed to respond to Complainant’s cease-and-desist letter, (ii) it is passing off and posing as Complainant, and (iii) it is not an authorized dealer of Complainant’s products and Complainant has not licensed or authorized Respondent to use its mark. These allegations are addressed as follows:

Complainant argues that Respondent has no rights or legitimate interests in the domain name in part because it failed to respond to a cease-and-desist demand. This might offer some minimal evidence of a lack of rights or legitimate interests, but Complainant cited no decisions of previous panels to support that argument. Even if this argument were relevant it would not be sufficient in and of itself to establish a prima facie case of no rights or legitimate interests. The plain language of Policy ¶ 4(c) provides that a respondent can demonstrate rights or legitimate interests in a domain name if it proves that any one of the three sets of circumstances listed in subparagraphs (i) through (iii) of ¶ 4(c) is present. Notwithstanding a failure to respond to a cease-and-desist demand, Complainant must still offer evidence on the three subparagraphs of Policy ¶ 4(c) in order to establish a prima facie case.

Complainant’s principal argument on the Policy ¶ 4(a)(ii) element is that Respondent is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead is passing off as Complainant and selling counterfeit products represented to be those of Complainant. The evidence does not support that argument. Complaint Annex 3 consists of a series of photos of what appear to be the back labels of products marketed by Complainant, which the Complaint states are “exemplar photographs of Complainant’s use of its house mark.” These labels bear Complainant’s entity name and identify it as the manufacturer of the product in the container, in one case identified as Revitalash, and list the ingredients of the product. Complainant’s entity name is presented as just that, the manufacturer name tucked away on the back label with the ingredients—not as a trademark. The products advertised on Complainant’s website at www.reviatlash.com on December 12, 2024 and at some time in 2015 (screenshots submitted as Complaint Annexes 6 and 7) are branded Revitalash and Revitabrow. No products advertised on those sites are promoted under the ATHENA COSMETICS mark. On the other hand, the products advertised and offered on Respondent’s website (screenshots submitted as Complaint Annex 8) are labeled Athena Cosmetix, which is also given as the name of the site sponsor. The colors, font, layout and general appearance of Respondent’s website are much different from that on Complainant’s 2015 website, as are the colors of the product containers displayed on the sites. Complainant’s website as of December 12, 2024 is much closer in general appearance to that of Respondent, but even here the products are branded differently and there is no suggestion of passing off or of counterfeiting by Respondent. Nor does Respondent’s website contain or imply any suggestion of affiliation with Complainant. Far from proving passing off, Complainant’s evidence affirmatively disproves it.

Complainant states that Respondent is not affiliated with it and that it has not authorized Respondent to use its mark. That argument is relevant and is often taken by UDRP panels as corroborating evidence of no rights or legitimate interests but it is not dispositive because, as discussed above, Complainant must still offer evidence on the three subparagraphs of Policy ¶ 4(c) in order to establish a prima facie case.

Complainant did not address the Policy ¶ 4(c)(ii) element but the WHOIS information furnished to Forum by the registrar lists the named Respondent as the registrant of the domain name. Both of these names are virtually identical to the domain name. Moreover, the screenshots of Respondent’s website submitted as Complaint Annex 8 demonstrate that Respondent was, without passing off or impersonation, using the domain name in connection with its business at least as of the date the screenshot was captured, which tends to show that Respondent has legitimately been commonly known by the domain name. Under the protocol established by Policy ¶ 4(c), this in and of itself defeats a prima facie case of no rights or legitimate interests.

For the reasons set forth above, the Panel finds that Complainant has failed to establish a prima facie case of no rights or legitimate interests. It notes also, however, that even if Complainant had made out a prima facie case, the evidence submitted by Respondent, discussed in greater detail below, including that of its recently-acquired UK trademark registration for ATHENA COSMETIX, fully and compellingly supports a finding that it does have rights and legitimate interests in the domain name. This being the case, the Panel is not required to analyze the remaining element of Complainant’s case, but inasmuch as the Panel believes there are additional material deficiencies in Complainant’s case and in light of Respondent’s request for a finding of reverse domain name hijacking it elects to do so.

Registration and Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that 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 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 domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site 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 web site or location or of a product of service on the respondent’s web site or location.

Complainant alleges that Respondent registered and is using the domain name in bad faith in part because it attempts to attract for commercial gain Internet users to its website by creating confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, where it sells counterfeit products. As discussed above, it has offered no evidence of passing off or selling counterfeit products. Complainant advertises and markets its products under the Revitalash and Revitabrow marks. Respondent advertises and markets its products under the much different ATHENA COSMETIX mark. The parties’ websites and their illustrations of their respective products are vastly different in appearance, and Respondent’s website does not even remotely suggest an affiliation with Complainant.

The concept of bad faith as illustrated in the four subparagraphs of Policy ¶ 4(b) necessarily involves a subjective intent on the part of a respondent knowingly to trade upon the goodwill of the complainant. Such subjective intent in turn requires that the respondent actually knew of the complainant and its rights in the relevant mark when it registered the domain name. Complainant alleges that Respondent had actual and constructive knowledge of it and its ATHENA COSMETICS mark when it registered the domain name. UDRP panels almost universally decline to find bad faith based upon constructive knowledge and this Panel does as well. The Way Int’l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.”).

As for actual knowledge, the Response states unequivocally that Respondent’s founder, Athena Todd, had no knowledge of Complainant or an ATHENA COSMETICS mark until she received Complainant’s cease-and-desist demand in October 2024. She began using ATHENA COSMETIX as her trade name in January 2022 (copy of Instagram post on January 19, 2022 included in Response Exhibit 6), organized her company under that name in September 2022 (UK business information service certificate submitted as Response Exhibit 8), and registered the domain name in April 2023 (WHOIS printout submitted as Complaint Annex 4 and screenshot of website hold submitted as Response Exhibit 10). Also submitted by Respondent are copies of email correspondence between Ms Todd and her solicitor demonstrating the care taken to ensure that Respondent’s trade name would not conflict with similar names owned by others (Response Exhibit 7). The reasons she selected that name included (i) a desire to reflect her own first name in her trade name, and (ii) her attraction as a matter of style to using the letter x at the end of Cosmetics resulting from discussion with a client who used that convention to name her restaurant the “Tropix” (screenshot of the www.tropixlondon.com website submitted as Response Exhibit 5). Response Exhibit 1 is the Respondent’s founder’s driving licence which confirms that Athena is her first name.

In attempting to discern actual knowledge and a subjective bad faith intent, panels have looked at many different types of evidence, including but not limited to use of a domain name in direct competition with a trademark owner, impersonation, the parties operating in the same market segment, the parties being physically located in the same general geographic area, a pattern of bad faith conduct, actual prior association between or among the parties, the fanciful or famous nature of the trademark, suggesting that any similarity is not happenstance. Importantly, allegations about a respondent’s subjective intention are not evidence in this regard. The only one of these factors present in this case is the parties’ involvement in the same market segment, particularly as it relates to products for eyelashes and eyebrows. As demonstrated by the Google search results on lashes and cosmetics submitted as Response Exhibit 15, however, there are many persons and entities involved in this industry (in excess of 56 million results), and this factor falls well short of evidencing any sort of prior knowledge on the part of this Respondent. Her selection of the dominant ATHENA element of the domain name is easily and obviously explained by the fact that it is her first name.

Complainant may have proven a USPTO registration for its ATHENA COSMETICS mark, but it has not proven fame for that mark. One has to search carefully even to find the single obscure place on the last page of each of Complainant’s websites, or at the bottom of the back labels on its product containers where that mark appears along with the ingredients. That is the only evidence it has provided of notoriety. Complainant’s Additional Submission states that its list of trademark registrations submitted as Complaint Annex 2 shows that Revitalash products have been available in UK since at least 2013. That is not correct—it shows only that, according to the list, Complainant has had a UK registered mark for Revitalash since 2013. There is no evidence in the record of sales or reputation of the Revitalash brand, let alone the ATHENA COSMETICS mark, in the UK at any time. In short, there is no evidence upon which to base a finding that Respondent was aware of that mark when it registered the domain name. The fact that the UK Intellectual Property Office registered the ATHENA COSMETIX trademark further corroborates the conclusion that Respondent not only did not know of the mark, it had no reason to know of it. This finding also disposes of Complainant’s argument that Respondent’s conduct falls within the circumstances described in Policy ¶ 4(b)(iii).

For the reasons set forth above, the Panel finds that Respondent did not register or use the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).

REVERSE DOMAIN NAME HIJACKING

Paragraph 1 of the Rules defines Reverse Domain Name Hijacking (“RDNH”) as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Paragraph 15(e) of the Rules provides, in relevant part: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

WIPO Overview 3.0 ¶ 4.16 states:

Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith…, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, [or] (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument.

Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard.

Complainant’s case is deficient in many material respects. There was no evidence whatever that the Athena Cosmetics name was or indeed could have been known by the consuming public, let alone the Respondent, as it was hidden away on the back label of its products and at the very bottom of the last page of its websites. Complainant could not, obviously, have been aware that the UK Intellectual Property Office would register Respondent’s ATHENA COSMETIX mark on January 25, 2025. It is also true that a response from Respondent to Complainant’s cease-and-desist demand might have avoided the filing of this Complaint, but the tone of that demand was very aggressive—describing it as bullying does not overstate the matter. The letter also lacked a proper legal basis in that it threatened that if the Complainant’s extensive demands were not met, the Complainant would commence legal proceedings in the English courts. In fact, the Complainant has not demonstrated to this Panel that it has any applicable legal rights in England or that it has a basis to commence such proceedings. The Respondent’s declining to respond to the letter is fully understandable.

Nevertheless, the general appearance of the parties’ websites as of December 12, 2024 was similar. From this, based upon the information that was available to Complainant before it filed the Complaint, Complainant and its attorney could reasonably have believed that Complainant had at least a chance of prevailing on its passing off theory of the case. Accordingly, the Panel finds that reverse domain name hijacking is not proven.

DECISION

Complainant having failed to establish two of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the athenacosmetix.com domain name be RETAINED by Respondent.

Charles A. Kuechenmeister, Chair

Michael A. Allen, Panelist

Nick J. Gardner, Panelist

February 6, 2025

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