The Complainant is M.E.G. Gottlieb Diaderma-Haus GMBH & Co. of Heidelberg, Germany, represented by Law Office Ullrich & Naumann, Germany.
The Respondent is Mina Asaro of San Diego, California, United States of America (the “US”). 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2011. On January 11, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On January 11, 2011, Tucows Inc. 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 January 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2011.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on February 24, 2011. 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 asserts that it is well-known as one of the oldest natural cosmetics producers back to the 1920s.
The Complainant is the owner of numerous trademark registrations for ARYA-LAYA and ARYA LAYA in various countries dating back to 1925, including a registration in the US where the Respondent is domiciled.
By agreement of November 5, 2008, the Complainant authorized the Respondent to import the Complainant's products at the Respondent’s own account into the state of California.
The Respondent registered the disputed domain name on February 18, 2010. An undated printout shows that the disputed domain name once connected to an online store offering the Complainant's products. The Complainant alleges that the web shop was closed after the Complainant contacted the Respondent and requested the transfer of the disputed domain name and that the Respondent asked for a payment of USD 100, 000 for the transfer of the disputed domain name. Currently, the disputed domain name connects to a website offering small business services. 5. Parties’ Contentions A. Complainant
The Complainant submits the following:
The disputed domain name is using the Complainant’s ARYA LAYA trademarks in identical form. The Respondent only added the short form “USA” at the end of the trademark. This is a mere geographical identification easily understood by the consumer. Therefore, the consumer will easily understand the disputed domain name as the domain name of the representation of the Complainant in the US.
The agreement between the parties only contained the right for the Respondent to import the Complainant’s products to California. The Respondent was not granted any right to use the Complainant’s trademarks for any other purpose.
The disputed domain name is used by the Respondent for a shop in which cosmetics are offered. Thus the products being sold by the Respondent under the disputed domain name are identical to the goods protected by the Complainant's trademarks. By using a domain name identical to the Complainant's trademarks adding the geographical identification “USA” the Respondent is pretending to be the US branch of the Complainant. The Internet user therefore believes to acquire products deriving from the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s trademark ARYA LAYA with the addition of the geographic term “usa”.
According to WIPO UDRP case law, the addition of a geographic term to a trademark does not normally alter the fact that the disputed domain name is confusingly similar to the trademark (cf., e.g., Revlon Consumer Products Corporation v. Ye Genrong, Fang Fang, Wang Liqun,WIPO Case No. D2010-1586, ).
The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under the circumstances of this case, there are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name.
The one-page agreement between the parties of November 5, 2008 merely grants the Respondent the right to import the Complainant's products and sell them at the Respondent's account in the state of California. The agreement does not specifically transfer any intellectual property rights to the Respondent and, in any event, its validity is limited to a period of two years (i.e., until November 5, 2010). In view of the Panelist, these circumstances do not amount to a right or legitimate interest of the Respondent in respect of the disputed domain name.
The Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
It appears from the facts of this case that the Respondent did not inform the Complainant about the registration of the disputed domain name. In addition, the Respondent could not assume in good faith that the registration would be authorized under the agreement between the parties of November 5, 2008. A further indication of bad faith is the fact that the disputed domain name appears to have been recently redirected to a website offering small business services and that the Respondent seems to have offered to transfer the disputed domain name for an amount of USD 100, 000 to the Complainant.
It is also obvious that, when the Respondent was using the disputed domain name for an online shop to sell the Complainant's products without informing the Complainant, the Respondent was attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark. Such conduct falls under paragraph 4(b)(iv) of the Policy.
Under the circumstances, the Panel finds that the Respondent’s conduct constitutes bad faith registration and use, thus fulfilling paragraph 4(a)(iii) 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 disputed domain name be transferred to the Complainant.
Tobias Zuberbühler
Sole Panelist
Dated: March 10, 2011
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