WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Strawberry Limited and Strawberry Cosmetics (Brands) Limited v. N/A, Wang Hong Hua Case No. D2008-1500 1. The Parties
The Complainants are Strawberry Limited and Strawberry Cosmetics (Brands) Limited, Hong Kong, SAR of China, represented by Richards Butler, Hong Kong, SAR of China.
The Respondent is N/A, Wang Hong Hua, Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. D/B/A P. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2008. On October 3, 2008, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. D/B/A P a request for registrar verification in connection with the disputed domain name. On October 8, 2008, Directi Internet Solutions Pvt. Ltd. D/B/A P 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 current registrant's administrative, billing, and technical contact. On October 8, 2008, the Center transmitted Complaint Deficiency Notification to the Complainants by email. In response to the notification, the Complainants submitted the Amendment to the Complaint on October 10, 2008. The Center verified that the Complaint and 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 4, 2008.
The Center appointed Hong Xue as the sole panelist in this matter on November 14, 2008. 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.
The Panel finds that it was properly constituted. The language of the proceeding is English, being the language of the Domain Name Registration Agreement, pursuant to paragraph 11(a) of the Rules, and also in consideration of the fact that there is no express agreement to the contrary by the parties. 4. Factual Background
The Complainants registered the domain name on August 2, 1999 and have been using the mark “STRAWBERRYNET” in the online retail business in relation to a range of discounted skin care and cosmetics products. The Complainants had filed trademark applications for “STRAWBERRYNET”.
The disputed domain name was registered on September 2, 2002. The Respondent, N/A, Wang Hong Hua, is the present domain name holder. 5. Parties' Contentions A. Complainant Identical or Confusingly Similar
In the Complainants' assertion, the name “STRAWBERRYNET” was created by R. J. Miles, the Chief Executive Officer of both Complainants, in 1999; through the website set up at the domain name , which was registered on August 2, 1999, the First Complainant has been offering and selling skin care, make-up, cosmetics, perfume and other related products to various countries around the world; STRAWBERRYNET has been extremely successful in its business and has become the world's leading online provider of the relevant products.
The Complainants assert that the mark STRAWBERRYNET has acquired substantial reputation by virtue of the worldwide presence and extensive use, advertisement and promotion.
The Complainants assert that the Second Complainant had filed the trademark application for “STRAWBERRYNET” in Hong Kong, SAR of China and thirty other countries in 2008.
The Complainants assert their rights over the mark “STRAWBERRYNET” by virtue of prior use and trademark applications.
The Complainants contend that the only difference between the disputed domain name and the mark “STRAWBERRYNET” is that the disputed domain name has only one “r” in “strawberrynet”.
The Complainants submit that the disputed domain name is confusingly similar to their mark “STRAWBERRYNET” because the minor and insignificant misspelling is insufficient to set aside the likelihood of confusion with the mark in which the Complainants have rights. Rights or Legitimate Interests
The Complainants assert that the Respondent is not affiliated with the Complainants and the Respondent has never been licensed, or otherwise authorized to register or use, the “STRAWBERRYNET” mark in any manner whatsoever.
The Complainants contend that there is no evidence to suggest that the Respondent has been commonly known by or that the Respondent is making a legitimate noncommercial or fair use of .
The Complainants also contend that the disputed domain name, which is a typographical misspelling of “strawberrynet”, is not used in connection with a bona fide offering of goods or services but purports to mislead the consumers looking for the Complainants' website and divert the Internet traffic to the Respondent's or associated companies.
The Complainants further contend that it could not be a coincidence for the disputed domain name to be similar to the created mark “STRAWBERRYNET” and used mainly in connection with skin care and cosmetics products.
Finally, the Complainants submit that the Respondent has no rights or legitimate interest in the disputed domain name . Registered and Used in Bad Faith
The Complainants contend that the Respondent knew the Complainants' domain name and mark when registering the disputed domain name with only one letter difference and using it in connection with skin care and cosmetics products.
The Complainants further contend that registration of a disputed domain name that is misspelling a well-known mark and unfairly benefiting from the reputation of the mark by misleadingly attracting consumers constitute bad faith.
The Complainants submit that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the requested transfer of the disputed domain name, the Complainants must establish that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(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.
Paragraph 4(a) of the Policy states that the burden of proof lies with the Complainants to establish that all these three elements are satisfied in this proceeding.
On the basis of the submissions and the relevant provisions of the Policy, the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainants assert the rights over the mark “STRAWBERRYNET” by virtue of the prior use and trademark applications.
The Panel finds that the Complainants are able to prove that the mark “STRAWBERRYNET” has been consistently and extensively used in the Internet retail business related to cosmetics products. Since the mark “STRAWBERRYNET” has become a distinctive identifier associated with the Complainants or their goods and services, the Complainants' common law right in the mark can be established.
One of the Complainants has filed the trademark applications for “STRAWBERRYNET” in 2008 in Hong Kong, SAR of China and other countries but the applications are yet to be approved. The overwhelming majority of the preexisting decisions shows that a trademark application does not establish a trademark right within the meaning of paragraph 4(a)(i) of the Policy (See usDocuments, Inc. v. Flexible Designs, Inc. / Craig Dinan,WIPO Case No. D2003-0583). Therefore, the Second Complainant's mere filing of the trademark applications does not of itself establish any trademark right recognizable under paragraph 4(a)(i).
In assessing the degree of similarity between the Complainants' mark and the disputed domain name, the Panel finds that apart from the generic top-level domain suffix “.com”, the disputed domain name consists of “strawberynet”, which is only a letter “r” less than the Complainants' mark “STRAWBERRYNET”. From the perspective of an average consumer, “strawberynet” and “strawberrynet” are not distinguishable at all.
The Panel therefore finds that the disputed domain name is confusingly similar to the mark in which the Complainants have rights. The Complaint successfully proves the first element required by paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(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; or
(ii) the respondent 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.
The Respondent has not field a Response. The Panel does not have before it any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances which might reasonably be said to give to the Respondent a right to or legitimate interest in the disputed domain name.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name, particularly given the following facts:
1. The Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “strawberynet”, which is extremely similar to the Complainants' created mark “STRAWBERRYNET”;
2. It is proved that the Complainants have not licensed or otherwise permitted the Respondent to use its mark or any other similar marks as a domain name or otherwise;
3. The Complainants' assertion that the Respondent is not commonly known by the disputed domain name and not using the domain name in connection with a bona fide offering of goods or services is not contended by the Respondent;
4. The Complainants assert that its mark enjoys a worldwide reputation with regard to online retail of cosmetics products. Consequently, in the absence of contrary evidence from the Respondent, no legitimate purpose of adopting the disputed domain name can be contemplated other than creating an impression of an association with the Complainants' mark.
The Panel finds that the Complaint successfully proves the second element required by paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(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 who is the owner of the trademark or service mark or to a competitor of the 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 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 the respondent's website or location or of a product.
The Panel concludes based on the case file that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.
The Complainants are able to prove the consistent and extensive use of the mark “STRAWBERRYNET” in connection with its online retail business of cosmetics products. Although the evidence presented by the Complainants to prove their assertion that the mark has been used since 1999, before registration of the disputed domain name in September 2002 is sparse at best, but nonetheless satisfactory to illustrate that the Respondent likely had the Complainants in mind when registering the disputed domain name, moreover, the Respondent does not contend the truthfulness of the assertion. In absence of the contrary evidence, the Panel finds the Complainants started using the mark “STRAWBERRYNET” prior to the registration of the disputed domain name. Additionally, the mark “STRAWBERRYNET” is not a generic term but a created term by the Complainants. Furthermore, the Respondent does not contest the evidence presented by the Complainants that the disputed domain name is used in connection with the online businesses identical with or similar to the Complainants'. All the above-mentioned facts show that it is not coincidental that the Respondent registered and uses a domain name as such.
Given the recognition of the Complainants' mark, the compelling conclusion is that the Respondent, by choosing to register and use a domain name which is confusingly similar to the Complainants' mark, intended to ride on the goodwill of the Complainants' mark in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainants. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.
The Panel finds that the Complaint successfully proves the third element required by paragraph 4(a) 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 First Complainant, Strawberry Limited.
Hong Xue
Sole Panelist
Dated: November 28, 2008
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