WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LR Health & Beauty Systems GmbH v. Styling You HB
Case No. D2007-0146
1. The Parties
The Complainant is LR Health & Beauty Systems GmbH of Ahlen, Germany, represented by Milbank, Tweed, Hadley & McCloy, LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Styling You HB, c/o Finno Furre, of Malmö, Sweden.
2. The Domain Names and Registrar
The disputed domain names and (“Domain Names”) are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2007. On February 7, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On the same day, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2007.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on March 27, 2007. 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 German company in the perfume, aloe vera, wellness and cosmetics business. Its products are sold directly to members of the public by around 250,000 independent distributors in 27 countries. Its annual turnover in 2004 was € 300 million.
The Complainant has registered various national and international word and device trademarks incorporating the LR name and is the owner of the domain names and registered on November 20, 1996, and March 21, 2000, respectively.
The Respondent is a former distributor for the Complainant. The Respondent entity, Styling You HB, appears to comprise both Mr. Finno Furre and his mother (for convenience referred to hereafter simply as the “Respondent”). It would appear that the Complainant terminated this distributor relationship in 2006. After the Complainant terminated the distribution agreement with the Respondent on or around December 20, 2006, the Respondent complained to Apax Partners, the global investment fund holding a 49% financial share in the Complainant, by e-mail of December 22, 2006 about a change in the distributors’ bonus system and demanded a payment of € 3 million if the new system was not abolished. The payment was to consist of “€2.000.000 for taking over my distributor number, €800.000 in lost inheritance for my son Finno Furre and his wife […] (who are losing their right to take over my business […]) and €200.000 for the pain and suffering my family has been put through”. The Respondent followed up by e-mail of December 28, 2006 stating that the termination of the Respondent’s distribution agreement could lead to a possible media scandal in Scandinavia and asking the Complainant “to take charge of the situation before it reaches all media organizations in Europe”. The Respondent attached two draft press releases and stated that they “are fully preparing going live with the following web-sites (…) www.Stop-Apax-Partners-F and www.Stop-LR-C”. The email continued to state that “if you are interested in avoiding this scenario playing out, have a look at the counter offer and get back to […] or myself Mr. Finno Furre immediately”.
In a letter dated January 18, 2007, from the Norwegian counsel of the Respondent the threat to activate the website content of the disputed domain names was reiterated should the Complainant refuse to agree a settlement in form of payment of € 3 million by January 26, 2007 in the ongoing dispute between the Complainant and the Respondent.
The domain name was registered on October 9, 2006, and the domain name on December 22, 2006. The website to which both Domain Names resolve was activated on January 24, 2007.
5. Parties’ Contentions
A. Complainant
The Complainant’s business and the LR name are well known. The Complainant is the registered owner of various word and device trademarks which incorporate the LR name.
Confusing similarity: As to the domain name in issue, the word “watch” is a neutral and/or descriptive term. Its addition to the Complainant’s LR trademarks does nothing to reduce the likelihood of confusion. In any event, the LR trademark is used in relation to watches. As to the domain name in issue, similarly, the addition of the words “stop” and “cheating” to the LR trademark does nothing to deflect the impact of the mark on the Internet user. Decisions under the Policy show that Panels have routinely found confusing similarity where the domain name in issue incorporates a well-known mark and merely adds a generic or slang term.
No rights or legitimate interests: In the circumstances, it is abundantly clear that the Respondent cannot have any rights or legitimate interest in respect of either of the domain names in issue. The Complainant has not authorized the Respondent to use its registered trademarks. Further, the Respondent is neither using nor making preparations to use the domain names in connection with a bona fide offering of goods or service. The Respondent has not been commonly known by the domain names or acquired any trademark rights in them. The sole purpose of the registration of the domain names was to tarnish the LR trademarks and plainly to disrupt the Complainant’s business.
Manifestly, the Respondent’s only reason for registering the disputed domain names is to exert improper pressure on the Complainant by threatening, in the context of the dispute between the Complainant and the Respondent’s mother, to harm the business of the Complainant and that of one of its primary shareholders.
Bad faith: At the time of registering the domain names in issue, the Respondent plainly intended to use the domain names in a campaign of vilification against the Complainant to cause the Complainant disruption and damage and to put pressure on the Complainant in its ongoing negotiations with the Respondent’s mother. The Respondent has continued to use both contested domain names in bad faith after their registration.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
- that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- that the Respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the domain names at issue.
Paragraph 4(b) of the Policy sets out circumstances which, again in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
A. Identical or Confusingly Similar
Previous WIPO Panelists have considered the question of whether domain names combining a trademark with a negative term are confusingly similar to the trademark. The majority view is that a domain name consisting of a trademark and a negative term is confusingly similar to the Complainant’s mark (see Overview of WIPO Panel Views on Selected UDRP Questions, section 1.3). A minority view holds that a domain name consisting of a trademark and a negative term is not confusingly similar because Internet users are not likely to associate the trademark holder with a domain name consisting of the trademark and a negative term (, Wal-Mart Stores, Inc. v. and Kenneth J. Harvey, WIPO Case No. D2000-1104; and , Lockheed Martin Corporation v. Dan Parisi, WIPO Case No. D2000-1015; , McLane Company, Inc. v. Fred Craig, WIPO Case No. D2000-1455; , America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM, WIPO Case No. D2001-0918).
Whichever view is adopted, the Panel in the present case does not consider that the disputed domain name is likely to be confused by Internet users with the Complainant’s LR trademark. The Panel notes in this respect the following factors. The Complainant’s claimed LR mark is towards the weaker end of the trademark spectrum, and although the Complainant claims that mark is well-known no compelling evidence is presented to that effect. See e.g. PRL USA Holdings. v. Northbay Real Estate, Inc. and John Loxton, WIPO Case D2006-1394. The Panel notes also the length of the mark (a mere two letters), the location of the mark within the domain name (sandwiched between two hyphens and the expressions “stop” and “cheating”), and the overall length of the domain name. Any distinctiveness that the LR mark may have is, in the Panel’s view, essentially concealed within the domain name.
The situation is different, however, with respect to the domain name , which combines the LR mark as the primary element with the generic term “watch”. The Panel notes also that the Complainant has apparently been marketing a series of jewelry under the LR trademarks since 1998. Internet users seeking information about the Complainant could very well mistakenly confuse the domain name with the Complainant or its LR mark. Accordingly, the Panel finds the domain name to be confusingly similar to the Complainant’s LR mark.
Whether or not the domain name in fact relates to a protest (“watchdog”) site does not change such finding. It is well established that the content of the website to which a domain name resolves is irrelevant to the evaluation of confusing similarity (Overview of WIPO Panel Views on Selected UDRP Questions, section 1.2).
In summary, the Complainant meets the requirements of paragraph 4(a)(i) of the Policy with regard to the domain name , but not with respect to . Because the requirements of paragraph 4(a) of the Policy have to be fulfilled cumulatively, the examination of the domain name may stop here, and the following assessment will only relate to the domain name.
B. Rights or Legitimate Interests
Legitimate interests in a domain name can be demonstrated, among others, if a 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” (paragraph 4(c)(iii) of the Policy).
The website to which the domain name resolves appears to present itself as a protest site. Whether or not such use is legitimate, the circumstances of this particular case do not support a finding of legitimate interests. The available record indicates that the Respondent threatened to activate the website if the Complainant did not provide a € 3 million settlement payment. It cannot reasonably be argued that such conduct was “non-commercial and fair”. The domain name was used to pressure the Complainant into a settlement. Any subsequent protest was tainted by the Respondent’s initial unfair use and its intent for commercial gain.
The Complainant has thus fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the same reasons as discussed above, it follows that the Respondent has registered and is using the domain name in bad faith. The domain name was apparently registered and is now seemingly being used to pressure the Complainant into a settlement. Such conduct cannot in the circumstances, whatever grievances the Respondent may have with the Complainant, be considered to be good faith for the purpose of the Policy. The Panel finds paragraph 4(a)(iii) of the Policy is fulfilled.
7. Decision
In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
The Complaint is denied with respect to the domain name .
Tobias Zuberbühler
Sole Panelist
Dated: April 10, 2007
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