WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION P&G Prestige Products, Inc. v. Ryogo Sugai Case No. D2009-1098 1. The Parties
The Complainant is P&G Prestige Products, Inc. of New York, United States of America, represented by Keating Muething & Klekamp PLL, United States of America.
The Respondent is Ryogo Sugai of Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2009. On August 17, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On August 17, 2009, Network Solutions, LLC 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” 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 proceedings commenced on August 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 11, 2009.
The Center appointed Torsten Bettinger as the sole panelist in this matter on September 21, 2009. 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 wholly-owned subsidiary of The Procter & Gamble Company, a global consumer products company which manufactures and distributes, among other things, numerous lines of cosmetic, hair care, skin care, beauty care and fine fragrance products under a host of brands.
Anna Sui is an American fashion designer whose brand is globally recognized in the Americas, Europe, Asia and the Middle East and whose clothing, fragrance, cosmetic and accessories lines retail in her stores and independent boutiques in over 50 countries. Anna Sui has granted to Anna Sui Corp., inter alia, the right to commercialize her name, likeness and endorsement in connection with the marketing and sale of fragrance and cosmetics products, among other things.
Anna Sui Corp. owns the following trademark registrations for “ANNA SUI” in the United States.
- US registration no. 2267280 ANNA SUI, registered on March 8, 1999;
- US registration no. 2267279 ANNA SUI, registered on March 8, 1999;
- US registration no. 2759304 ANNA SUI, registered on February 9, 2003;
- US registration no. 1303898 ANNA SUI, registered on June 11, 1984;
- US registration no. 2267281 ANNA SUI, registered on March 8, 1999;
- US registration no. 2267282 ANNA SUI, registered on March 8, 1999; and
- US registration no. 3640117 ANNA SUI, registered on June 16, 2009
The trademarks mainly cover clothing, footwear, fragrance, cosmetics, bags, glasses and jewellery.
Anna Sui Corp. is also the registrant of the domain which provides information on Ms. Sui's continuing efforts in the fashion design industry and also advertises and promotes her branded line of fragrances and cosmetic products and which is operated and updated by the Complainant.
In 1997, Anna Sui Corp. entered into an agreement with the Complainant to develop a signature fragrance. Through this agreement, Anna Sui Corp. granted to the Complainant an exclusive license to use the ANNA SUI name and trademarks in connection with the manufacture, sale, distribution, merchandising, advertising, promotion and marketing of fragrances and fragrance line related cosmetics, skin and body care, and personal care products throughout the world and permitted the Complainant to develop a website to promote or sell the Anna Sui products. In connection with the rights granted therein, the Complainant is authorized to commence an action or proceeding in its name to protect its rights against any and all infringements or possible infringements of the ANNA SUI name and trademarks.
Pursuant to the rights granted by Anna Sui Corp., the Complainant advertised, marketed and promoted the Anna Sui products through the disputed domain name. Prior to December, 2008, the disputed domain name was owned by Cosmopolitan Cosmetics USA, Inc. (the former name of the Complainant).
In December, 2008, the disputed domain name registration lapsed by mistake and was registered by the Respondent, who uses the disputed domain name in connection with a website providing information on Anna Sui's fragrance and beauty products and linking to third party websites (e.g. A) where consumers can purchase Anna Sui products.
The Complainant sent a warning email to the Respondent on August 7, 2009 outlining the Complainant's position that it was the prior owner of the disputed domain name and further requesting that the domain name be transferred to the Complainant. The Respondent responded, via email, denying the Complainant's allegation and demanding $5,000 for the domain name. 5. Parties' Contentions A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant first submits that it is licensee of the owner of the ANNA SUI marks and therefore has own rights under the Policy and argues that the disputed domain name is identical or confusingly similar to the ANNA SUI marks as it contains the term, ANNA SUI, in its entirety, to which is appended the generic term “beauty” which describes the nature of the Anna Sui products, namely “beauty products”.
In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that the Respondent has no connection or affiliation with Anna Sui or the Complainant, that the Respondent has not received any license, authorization, or consent – express or implied – to use the ANNA SUI name and mark in a domain name or in any other manner and that he is not making a legitimate non-commercial or fair use of the domain name.
In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant asserts that
- the Respondent was aware of the existence of the Complainant's previously existing website when registering the disputed domain name;
- the Respondent obtained the domain without any authorization from Ms. Sui, Anna Sui Corp., or the Complainant, in an effort to pass off the site as an authorized Anna Sui website in violation of paragraph 4(b)(iv) of the Policy; and
- upon receiving a request from the Complainant's counsel to transfer the domain name to its rightful (and previous) owner, the Respondent demanded that the Complainant pay $5,000, which far exceeds the amount invested by the Respondent to register the domain name and that it is clear that the Respondent has registered and/or acquired the domain name primarily for the purpose of selling the domain name to either the Complainant, Anna Sui Corp., or Ms. Sui herself, or potentially to a competitor of the Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the domain name in violation of paragraph 4(b)(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah‚WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327; BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR,WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
The disputed domain name wholly incorporates the ANNA SUI marks, which are used in connection with clothing, footwear, fragrance, cosmetics, bags, glasses and jewellery.
The fact that the Complainant does not own the said trademarks itself but is a licensee of the trademark owner does not hinder a finding that the Complainant can rely on rights under paragraph 4(a)(i) of the Policy. It is well established that a licensee of a trademark is considered to have rights in a trademark under the UDRP (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions; Telcel, C.A. v. jerm and Jhonattan Ramírez,WIPO Case No. D2002-0309; Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions,WIPO Case No. D2003-0624; Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington,WIPO Case No. D2003-0796; Spherion Corporation v. Peter Carrington, d/b/a Party Night Inc.,WIPO Case No. D2003-1027).
Furthermore, the fact that the word “beauty” is added to the ANNA SUI Marks does not eliminate the similarity between trademarks and the disputed domain name, as “beauty” is a descriptive component of the disputed domain name. In numerous cases, it has been held that a domain name that wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks, such as “beauty” (See Research In Motion Limited v. Georges Elias,WIPO Case No. D2009-0218 - et al; Deckers Outdoor Corporation v. Rongchun Huang and Yuan Chen, NAF Case No. FA 1248979 et al; GA Modefine SA v [-], A's Administrative Contact,WIPO Case No. D2006-1351 - ; PRL USA Holdings, Inc. v. J. Schwarz,WIPO Case No. D2006-0147 ).
It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429).
The Panel thus finds that the domain name is confusingly similar to the trademark in which the Complainant has rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name.
The Complainant asserted that the Respondent has no connection or affiliation with Anna Sui or the Complainant, that the Respondent has not received any license, authorization, or consent – express or implied – to use the ANNA SUI name and mark in a domain name or in any other manner and that he is not making a legitimate non-commercial or fair use of the domain name.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
The Panel is also convinced that the Respondent registered and used the domain name in bad faith.
The ANNA SUI marks are globally recognized and well-established. The Respondent registered a domain name that consists of the highly distinctive ANNA SUI marks and the word “beauty”, which describes the nature of the Anna Sui products. As the name ANNA SUI as such has no inherent connection to beauty products it is inconceivable that the Respondent registered a combination of the ANNA SUI marks and the word “beauty” without being aware of the ANNA SUI marks. This finding is supported by the fact, that the Respondent offers information on Anna Sui and Anna Sui products on his website and linking to third party websites (e.g. A).
The Panel is also convinced that Respondent used the domain name in bad faith. The fact that the Respondent offered the disputed domain name to the Complainant for the amount of USD 5,000 indicates that the Respondent has registered the disputed domain name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name and qualifies as bad faith under paragraph 4(b)(i) of the Policy (See Paul Plumadore, James Tindell, River Road Antiques, Ltd v. William Kilgore,WIPO Case No. D2007-1922; Telefonaktiebolaget L.M Ericsson v. iNun, WIPO Case No. D2005-0732; CBS Broadcasting, Inc. v. Gaddor Saidi,WIPO Case No. D2000-0243).
Furthermore, the use of the disputed domain name in connection with a website providing information on Anna Sui's fragrance and beauty products and linking to third party websites where consumers can purchase Anna Sui products clearly indicates that the Respondent's intents to redirect Internet users to his website and thus tries to capitalize on the goodwill of the Complainant's trademark. This qualifies as bad faith under paragraph 4(b)(iv) of the Policy in that the Respondent's use of the domain name attempts to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
The Respondent's default in this proceeding reinforces an inference of bad faith. If the Respondent had arguments that it acquired the domain name in good faith, and had good faith bases for using the domain name, it should have asserted them.
The Panel therefore concludes that also the requirement of paragraph 4(a)(iii) of the Policy has been met. 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.
Torsten Bettinger
Sole Panelist
Dated: October 5, 2009
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