WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natura Cosm�ticos S.A., Industria e Com�rcio de Cosm�ticos Natura Ltda. v. Belize Domain Whois Service Lt
Case No. D2007-1165
1. The Parties
Complainants are i) Natura Cosm�ticos S.A., Sao Paulo, Brazil; and ii) Industria e Com�rcio de Cosm�ticos Natura Ltda., Sao Paulo, Brazil, both represented by Ricci Advogados Associados, Brazil.
Respondent is Belize Domain Whois Service Lt, City of Belmopan, Belize.
2. The Domain Name and Registrar
The disputed domain names and are registered with Intercosmos Media Group d/b/a directNIC.com
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2007. On August 8, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On August 20, 2007, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 3, September 18, and September 27, 2007. 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”), 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 September 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2007.
The Center appointed Kiyoshi I. Tsuru as the sole panelist in this matter on October 31, 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
Complainants are the holder of the following trademark registrations, inter alia:
TRADEMARK
REG. No.
Class
DATE OF REGISTRATION
COUNTRY
NATURA
815.082.649
BR 03:20
June 21, 1994
Brazil
NATURA
815.211.759
BR:
40:15
November 7, 1989
Brazil
NATURA (& DESIGN)
815.102.003
BR
03:20
April 12, 2004
Brazil
NATURA (& DESIGN)
815.441.657
BR
03:20
June 28, 2004
Brazil
NATURA (& DESIGN)
815.441.665
BR:
40:15
November 4, 1997
Brazil
NATURA (& DESIGN)
820.725.420
NCL 05
May 5, 1998
Brazil
NATURA (& DESIGN)
820.725.598
NCL 08
May 8, 1998
Brazil
NATURA (& DESIGN)
820.727.601
BR: 14:30
May 8, 1998
Brazil
ESSENCIAL DE NATURA
95/38
NCL 03
September 22, 1995
France
NATURA
232091
NCL 03
May 25, 1996
International (Madrid Protocol)
Complainants further submitted lists and copies of titles of registration of dozens of registrations for trademarks relating to NATURA around the world in relation to cosmetic products.
The domain name was registered on July 14, 2005.
The domain name was registered on December 17, 2004.
5. Parties’ Contentions
A. Complainants
Complainants submitted the following arguments:
A.1. Identity or confusing similarity
The word mark NATURA (Reg. No. 817.230.890) was acknowledged by the Brazilian Patent and Trademark Office as Highly Renowned.
On March 5, 2007, the Complainants sent a cease and desist letter to the Respondent. Complainants did not receive a response.
Both of the disputed domain names are a reproduction of the main distinctive element of Complainants’ trademarks. In addition, incorporates the term “Cosm�ticos”, which represents the indication of Complainants’ main business activity, which has been a cause of confusion among the public.
A.2. Respondent’s lack of rights or legitimate interests in respect of the domain name
Respondent’s websites are search sites, having even a channel for the sales of cosmetic products where Complainants’ competitors can advertise their cosmetic products.
Complainants did not execute any agreement authorizing the use of the trademark NATURA by Respondent.
A.3 Bad faith registration and use
The websites to which the disputed domain names resolve, contain insertions in Portuguese and are being displayed in Brazil.
Respondent’s conduct is parasitic and constitutes bad faith. Respondent is performing acts of unfair competition, and ignoring the notoriety and fame of the trademark NATURA.
Respondent intends to lead the consuming public into error, doubt or confusion, leading them to believe that the products advertised on Respondent’s websites are somehow related to the articles manufactured by Complainants.
B. Respondent
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
In accordance with the Policy, paragraph 4(a), Complainants must prove that:
(i) the domain names in question are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain names have been registered and is being used in bad faith.
In the administrative proceeding, Complainants must prove that each three of these elements are present.
As Respondent has failed to submit a Response to the Complaint, the Panel may choose to accept as true all of the allegations supported and reasonable of the Complaint (Encyclopedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Respondent’s domain names entirely incorporate Complainants’ trademark NATURA. This type of conduct has been found by previous panels to render domain names confusingly similar to complainant’s marks. See, for example, AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253.
The addition of a generic term like “Cosm�ticos” to the first disputed domain name does not eliminate the confusing similarity between and Complainants’ trademark NATURA. See, for example, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888. Likewise, the addition of a geographic term like Per� to the second disputed domain name does not eliminate the confusing similarity between and Complainants’ trademark NATURA. See, Mutatis, Mutandis, Dell Computer Corporation .v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363; America Online, Inc .v. Asia On-Line This Domain for Sale, NAF Case No. FA094636; Bloomberg L.P. v. Sein M.D., NAF Case No. FA096487, Princess International Sales y Service Limited and Princess Yachts International PLC v. Lambert and Turner/Lambert Turner Marine,WIPO Case No. D2002-0419; and America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713.
With respect to Complainants’ trademarks that incorporate a design, said design is irrelevant in the domain name realm, and thus the disputed domain names are confusingly similar to said trademarks. Citing EFG Bank European Financial Group SA v. Jacob Foundation,WIPO Case No. D2000-0036, and applying it to the present case: “Only the graphic elements of such trademark [sic] which anyway cannot be reproduced in a domain name, were left out.”
To carry into effect the similarity analysis, a panel must not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No.D2000-0300; J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing,WIPO Case No. D2000-0035; see also Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; and Sony Kabushiki Kaisha v. Inja, Kil,WIPO Case No. D2000-1409).
Therefore, the first element of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The following are examples of circumstances where a respondent may have rights or legitimate interests in a contested domain name:
“(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 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.” (the Policy, paragraph 4(c))
According to the Complainants’ arguments, which have not been rebutted by the Respondent, said Respondent is not making a bona fide offering of goods or services, because Respondent’s sites feature, according to Complainants’ unchallenged affirmations, products from Complainants’ competitors. The fact that Respondent chose , when Complainants are in the business of manufacturing and commercializing cosmetic products, reinforces the concept that Respondent’s use of this domain name is not a good faith use under paragraph 4(c)(i) of the Policy, nor Respondent’s choice a coincidence. Since said domain name is bundled up with by virtue of having been registered by the same Respondent who obtained , and considering that said domain name also entirely incorporates the trademark NATURA, it is possible to conclude that the use of this domain name does not create rights or legitimate interests on the side of Respondent.
The record does not suggest nor has Respondent proved that it has been commonly known as and/or .
Complainants argue that Respondent is trying to divert Complainants’ consumers to Respondent’s site, with intent for commercial gain. This affirmation is supported by the content of the website and has not been contested by Respondent.
The evidence on record does not show the existence of legitimate interests or rights on the side of Respondent.
The second element of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”
Complainants raise an unfair competition argument, which focuses on their accusation of Respondent’s intent to mislead the consuming public, by leading them to believe that the products featured on Respondent’s site are somehow related to the articles made and sold by the Complainants, causing an incorrect association in the minds of consumers. This allegation has not been challenged. It seems that Respondent’s election of domain names seems to be, under this argument, not a mere coincidence (see section 6 B. supra). Respondent is the holder of two domain names that entirely incorporate the mark NATURA. One of those domains also incorporate the term “Cosm�ticos”. Cosmetics are precisely one of the main lines of products sold by the Complainants, and covered by Complainants’ trademark registrations. Attracting Internet users to the sites to which the contested domain names resolve, by trying to mislead said users through the use of domain names that fully incorporate registered trademarks (trademark NATURA having been declared highly distinctive by a local trademark authority) and featuring products that compete with the NATURA products in said websites falls within the scope of paragraph 4(b)(iv).
Therefore, the third element of the Policy has been fulfilled.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainants.
Kiyoshi I. Tsuru
Sole Panelist
Dated: November 14, 2007
Full & Egal Universal Law Academy