WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jafra Cosmetics, S.A. de C.V. v. La Peer Beauty
Case No. D2007-1829
1. The Parties
The Complainant is Jafra Cosmetics, S.A. de C.V., Mexico, Mexico, represented by Seyfarth Shaw LLP, United States of America.
The Respondent is La Peer Beauty, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2007. On December 12, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On December 12, 2007, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 December 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2008.
The Center appointed Ross Carson as the sole panelist in this matter on January 16, 2008. 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 the registered owner of United States Trademark Reg. No. 677,471 for the trademark JAFRA registered on April 21, 1959, in association with the goods facial creams, eye cream and eye shadow, foot, after shave, body and facial lotions, cologne, perfume, personal deodorants, powder bases, face powder, rouge, lipstick, hair dressing, shampoo, and hair rinse. First used in commerce: January 27, 1957. The Complainant is also the registered owner of United States Trademark Reg. No. 2,351,448 for the mark JAFRA registered on May 23, 2000, in association with the goods cosmetics, namely, foundation, concealer, eye and lip pencils and liners, mascara, cosmetic compacts and lip gloss, body and shower gels and washes, body scrubs, body oils, bath oils, body mists and splashes, skin fresheners, namely, toners, body powder, eau de toilette, skin cleansing creams, lotions, gels, and masks, hand creams, day and night creams, shaving creams, makeup removers, nail care preparations, namely, cuticle cream, nail polish, base coat and top coat, and nail polish remover, sunblock, sun screen and self-tanning lotion, hair sprays and spritzers. First use in commerce: 1958.
The Complainant, its predecessors-in-interest, and its United States licensee, Jafra Cosmetics International, Inc. (“Jafra Cosmetics”), have continuously used the trademark JAFRA in the United States in connection with a wide variety of cosmetics, toiletries, and other personal care products that are sold directly to consumers through consultants. The JAFRA trademark is a fanciful mark consisting of a coined term formed by the first several letters of the first names of Jan and Frank Day, the two founders of the Jafra business in the United States. The Complainant’s United States licensee Jafra Cosmetics currently distributes “Jafra” products in the United States through a consultant force of approximately 54,000 persons that annually achieves sales of “Jafra” products in excess of $98,000,000.
The Complainant and its United States licensee Jafra Cosmetics have used the JAFRA mark on the Internet for many years prior to the Respondent’s registration of the disputed domain name, at a site accessible through the domain name .
The Respondent registered the domain name in dispute on March 16, 2004.
5. Parties’ Contentions
A. Complainant
A.1 Identical or Confusingly Similar
The Complainant states that it is the registered owner of the registered trademark JAFRA as described in paragraph 4 immediately above. The Complainant states that the domain name in dispute registered by the Respondent is identical or confusingly similar to the Complainant’s JAFRA trademark within the meaning of paragraph 4(a)(i) of the Policy.
The Complainant states that the domain name in dispute is comprised of three elements: (1) the Complainant’s fanciful JAFRA mark, in its entirety; (2) the generic term “beauty;” and (3) the top level domain “.com.”
The Complainant states that there are numerous UDRP decisions holding that a domain name in dispute is confusingly similar to complainant’s trademark where the distinctive portion of the domain name comprises complainant’s trademark in its entirety. See Max Rohr, Inc. v. Puros Dawa HB S.A., WIPO Case No. D2005-0488 “[C]ase law has consistently confirmed that when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words, including generic or descriptive terms, or words designating goods or services with which the mark is used.”
The Complainant further states that the addition of the generic term “beauty” to the Complainant’s fanciful mark JAFRA in the disputed domain name has no legal significance and does not differentiate the domain name in dispute from the JAFRA mark. The Complainant states that there is a lengthy string of UDRP decisions concluding that the addition of generic words to a registered trademark does not render the domain name concerned any less similar to the Complainant’s mark. See Diageo Brands B. V., Diageo North America, Inc. and United Distillers Manufacturing, Inc. v. iVod .com a.k.a. Alec Bargman,WIPO Case No. D2004-0627 (“adding a word such as ‘vodka,’ that is descriptive of the goods offered by Complainants under its Marks, does not distinguish the domain names from the Marks but rather supports a finding of confusing similarity); Jafra v. Active Vector,WIPO Case No. D2005-0250 “The finding of confusion in this case is strengthened by the fact that the term [‘beauty’] is inextricably linked to Complainant’s products, and as such constitutes a generic word in the [cosmetic/beauty] business, is itself unregisterable or disclaimable in any given trademark application in the class concerned, under most, if not all, trademark registration systems.”
The Complainant further submits that it is well settled that the TLD .com has no trademark significance and must be disregarded in assessing identity or confusing similarity. See, e.g., Pioneer Hi-Bred International, Inc. v. Manila Industries, Inc., National Arbitration Forum Case No. FA0503000444468, (“[t]he addition of the generic top-level domain ‘.com’ is insufficient to negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy Paragraph 4(a)(i)”); VAT Holdings v. V,WIPO Case No. D2000-0607 (“.com” TLD has no trademark significance).
A.2 No Rights or Legitimate Interests in respect of the Domain Name
The Complainant states that it has never licensed or authorized the Respondent to use its JAFRA trademark.
The Complainant further submits that the Respondent cannot show that it has any rights or legitimate interests in respect of the disputed domain name, and none of the defenses set forth in paragraph 4(c) of the Policy is available to the Respondent. The website to which the disputed domain name resolves offers products produced by the Complainant’s competitors, the only reasonable inference to be drawn is that the Respondent had actual notice of the Complainant’s JAFRA trademark when the Respondent registered the domain name in dispute. See Valpak Direct Marketing v. Manila Industries, Inc.,WIPO Case No. D2006-0714, (“The Panel finds it highly probable that Respondent had Complainant’s mark in mind when registering the Domain Name. Not only is VALPAK an uncommon, if not unique, combination of letters, but the website to which the Domain Name resolves contains links to sites offering coupons. It is also reasonable to infer that the Respondent derives pecuniary gain from such use of the Domain Name. On the record, no other plausible explanation exists to account for Respondent’s decision to register the Domain Name.”). The Respondent’s registration and use of the domain name in dispute was based upon its intent to trade upon the goodwill in the Complainant’s JAFRA trademark in the United States for the Respondent’s own commercial advantage.
The Complainant further submits that the Respondent’s registration and use of the domain name in dispute to divert Internet users seeking products associated with the Complainant’s JAFRA trademark to its website offering goods of the Complainant’s competitors is not a bona fide use of the disputed domain name.
The Complainant further states that having regard to the fanciful nature of the Complainant’s JAFRA trademark and its registration and use in the United States long prior to the Respondent’s registration and use of the disputed domain name, the Respondent cannot possibly show that before any notice to it of this dispute, it engaged in the use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy, or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. Jafra v. Unasi, WIPO Case No. D2005-0926.
The Complainant submits that its trademark JAFRA is a coined term, and, to the Complainant’s knowledge, is not a recognized first name or surname in the United States or any foreign country, and because “beauty” is a generic term, there can be no doubt that the Respondent has never been known by either the disputed domain name or a name corresponding to the domain name pursuant to paragraph 4(c)(ii) of the Policy.
A.3 Registered and Used in Bad Faith
The Complainant submits that its trademark JAFRA was both well known and distinctive at the time that the Respondent registered the domain names in dispute.
The Complainant submits that the Respondent’s use of the domain name in dispute to attract Internet users to the Respondent’s website so that the Respondent can try to sell these consumers its beauty services and/or the beauty products of the Complainant’s competitors is bad faith use and registration under paragraph 4(b)(iv), because it creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Internet users seeking the Complainant’s beauty products associated with the Complainant’s trademark JAFFRA are diverted to the Respondent’s website through the disputed domain name. See, e.g., Pioneer Hi-Bred International, Inc. v. Manila Industries, Inc., National Arbitration Forum Case No. FA0503000444468 (finding bad faith registration and use where the respondent “registered the disputed domain names with actual or constructive knowledge of Complainant’s rights in [its] marks due to Complainant’s registration of the marks in the United States Patent and Trademark Office . . . and use of the marks in commerce” and “intentionally attempted to attract potential customers from Complainant to Respondent’s website by taking advantage of Internet users who are searching under Complainant’s . . . marks and diverting them to Respondent’s commercial website.”).
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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 fact that the Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. The failure of the Respondent to file a Response results in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
A. Identical or Confusingly Similar
Pursuant to Paragraph 4(a)(i) of the Policy the Complainant must establish rights in a trademark and secondly that the domain names in dispute are identical or confusingly similar to the trademark in which the Complainant has rights.
The Complainant has established that it is registered as the owner of United States trademark registrations on the principal register for the trademark JAFRA, U.S. Registration Nos. 677471 and 2351448, registered in relation to various types of cosmetics, toiletries and other personal care products.
It is well established that the addition of a gTLD such as “.com” is without legal significance in determining identity or similarity. See, e.g., Habit Holding Co., L.L. C. v. None /Michael Pimentel, WIPO Case No. D2004-1009. The relevant comparison is between the JAFRA trademark and the second-level domain, “jafrabeauty”.
The distinctive element of the domain name in dispute is the term “jafra” which is identical to the Complainant’s registered trademark JAFRA. The trademark JAFRA is a coined word. The second part of the domain name in dispute is the descriptive term “beauty”, descriptive of the intended effect of applying cosmetics, toiletries, and other personal care products offered and sold in association with the Complainant’s registered trademark JAFRA. The addition of the generic term “beauty” to the Complainant’s fanciful mark JAFRA in the disputed domain name has no legal significance and does not differentiate the domain name in dispute from the Complainant’s JAFRA trademark. See Jafra v. Active Vector,WIPO Case No. D2005-0250, “The finding of confusion in this case is strengthened by the fact that the term [‘beauty’] is inextricably linked to Complainant’s products, and as such constitutes a generic word in the [cosmetic/beauty] business, is itself unregisterable or disclaimable in any given trademark application in the class concerned, under most, if not all, trademark registration systems.”
The distinctive element of the domain name in dispute is the term “jafra” which is identical to the Complainant’s registered trademark JAFRA. There are numerous UDRP decisions holding that a domain name in dispute is confusingly similar to complainant’s trademark where the distinctive portion of the domain name comprises complainant’s trademark in its entirety. See Max Rohr, Inc. v. Puros Dawa HB S.A., WIPO Case No. D2005-0488 “[C]ase law has consistently confirmed that when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words, including generic or descriptive terms, or words designating goods or services with which the mark is used.”
The Panel finds that the Complainant has proven that the domain name in dispute is confusingly similar to the Complainant’s registered trademark JAFRA.
B. Rights or Legitimate Interests
Pursuant to Paragraph 4(a)(ii) of the Policy the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.
The Respondent has no United States trademark registration for the trademark JAFRA. The Respondent is not affiliated with the Complainant and has never been authorized by the Complainant to use the Complainant’s registered trademark or any trademark confusingly similar thereto.
The web page associated with the domain name in dispute displays a series of sponsored links relating to cosmetics and related beauty products offered by competitors of the Complainant. UDRP decisions have consistently found that under similar circumstances registrants that “park” their domain name using redirecting services have not made a bona fide offering of goods or services giving rise to any rights or legitimates interest in the domain name in dispute. Deloitte Touche Tohmatsu v. Henry Chan,WIPO Case No. D2003-0584.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name in dispute. The Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the domain name in dispute pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the domain name in dispute. The Respondent did not file a reply and avail itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that the Complainant has proven that the Respondent does not have any rights or legitimate interests in the domain name in dispute.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4 (a)(iii) of the Policy the Complainant must prove that the domain name in dispute has been registered and used in bad faith.
The Complainant has established long standing and extensive use and registrations in the United States of America of the trademark JAFRA in relation a broad range of cosmetics and personal care products. The Respondent chose the domain name in dispute comprised of the Complainant’s trademark JAFRA in combination with the generic word “beauty”, commonly used to describe beauty products. The Complainant established that the Respondent is using the confusingly similar domain name in association with home pages including sponsored links to cosmetics and beauty products of competitors of the Complainant. The Panel infers that the Respondent registered the domain name in dispute with knowledge of the Complainant’s widely known trademark and goods.
The domain name in dispute registered by the Respondent includes as the distinctive element of the domain name the Complainant’s created trademark JAFRA. The registration of a domain name identical or confusingly similar to widely-known trademarks by a person with no connection to that trademark amounts to “opportunistic bad faith” (see Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137).
In registering and using the domain name in dispute, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s JAFRA trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The domain name in dispute resolves to webpages that provide links to cosmetics and beauty products of competitors of the Complainant. The links on the website have the appearance of pay-per-click advertising links. The use of a domain name in which the Complainant’s widely used JAFRA trademark is the distinctive element to link to pay-per-click advertising websites is a persuasive indication that the Respondent deliberately seeks to capitalize on the identity or close similarity of the domain names in dispute to the Complainant’s JAFRA trademark to gain revenue there from (see Alta Vista Company v. Andrew Krotov, WIPO Case No. D2000-1091; MatchNet pk v. MAC Trading, WIPO Case No. D2000-0205).
The Panel finds that the Complainant has proven that the Respondent registered and used the domain name in dispute in bad faith as set out in paragraph 4 (b)(iv) of the Policy.
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 name be transferred to the Complainant.
Ross Carson
Sole Panelist
Dated: January 30, 2008
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