The Complainants are Natura Cosméticos S/A and Indústria e Comércio de Cosméticos Natura Ltda. of Sao Paulo Brazil, represented by Ricci Advogados Associados, Brazil.
The Respondent is Hector Soto of Queretaro, Mexico. 2. The Domain Name And Registrar
The disputed domain name (the “Domain Name”) is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2012. On January 3, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On the same date, eNom 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 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2012.
The Center appointed Daniel Peña as the sole panelist in this matter on February 8, 2012. 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 Complainants established since 1969 are amongst the most recognizable companies within the field of manufacturing and sales of cosmetics and perfumery from Brazil.
The Complainants have been well known for the trademark NATURA for approximately 40 years in several countries such as Argentina, Peru, Bolivia, Chile, Colombia, Venezuela, France and Mexico.
The Complainants have made high investments in the areas of research and development, production, advertising and marketing regarding the trademark NATURA.
According to the evidence submitted by the Complainants there are multiple trademark registrations for the trademark NATURA in various countries such as Brazil with trademark registration No. 815.0820649, France with trademark registration No. 9821, Mexico with trademark registration No. 487408 and International Trademark registration No. 232091. There is also a European Community Trademark registration No. 005438692 for the words NATURA BEM AND ESTAR BEM.
The Complainants would like to emphasize that the trademark NATURA was recognized by the Brazilian trademark office (INPI) as a highly renowned trademark which implies, that as such, it has special protection in Brazil in all fields of activity and in all classes, published on the Brazilian property gazette No. 2062, on July 13, 2010.
The Domain Name was registered by the Respondent on July 25, 2010. 5. Parties’ Contentions A. Complainant
The Complainants contend that they have rights over the trademark NATURA.
The Domain Name contains the Complainants’ trademark.
The Complainants argue that the Respondent has no rights or legitimate interests over the trademark NATURA.
The Respondent is not a company controlled by the Complainants or an authorized consultant to sell NATURA products in Mexico. Hence, the Complainants did not execute any agreement with the Respondent regarding authorization of use of the trademark NATURA.
The Complainants state that the Respondent is well aware of the trademark NATURA and as such, offers its products for sale, being evident the use of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainants must establish rights in a trademark and secondly that the Domain Name is identical to or confusingly similar to the trademark in which the Complainants have rights.
In this Panel´s view, the Domain Name is confusingly similar to the Complainants’ trademark NATURA. The Panel finds that the use of the words tu tienda in Spanish as a prefix of the Complainants’ trademark in the disputed Domain Name serve the purpose of creating confusion with the Complainants’ products, directed towards costumers or possible consumers of the Complainants’ products located in Mexico. By no means does the use of such wording serve to differentiate the Respondent’s activities from those of the Complainants’.
Accordingly, the Panel finds that the Complainants have established the first requirement under the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainants must prove that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainants argue that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainants bear the burden of establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainants to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth.
In this case, the Respondent has not been commonly known by the Domain Name ; or, made any legitimate noncommercial use of the Domain Name, without intent for commercial gain in order to misleadingly divert consumers or to tarnish the Complainant’s trademarks. In fact, the Domain Name has been used by the Respondent in order to sell products corresponding to the Complainants in Mexican territory. However, if a reseller or distributor aims to be considered as making a bona fide offering of goods and services and thus have a legitimate interest in the domain name, its use must meet certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site is accurately and prominently disclosing the registrant's relationship with the trademark holder. In this case, the use of the Domain Name suggests that there is an authorized commercial relationship between the Complainants and the Respondent but simultaneously the Respondent includes on its website a mention whereby its mercantile activities are totally independent from Complainants’ commercial presence. In sum, in the Panel’s view, the offer of Complainants’ products by the Respondent is not considered a bona fide offering of goods. Refraining from submitting a response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the Domain Name.
The Panel concludes from the evidence provided by the Complainants, that the Respondent has no rights or legitimate interests in the Domain Name . Therefore, the Panel considers that the requirements of paragraph 4(a)(ii) of the Policy are fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances that constitute evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
“(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 that 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 its 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 or service on its website or location”.
The utilization of the Domain Name for commercialization purposes and the selling of products under the trademark NATURA, in the particular circumstances of this case, constitute registration and use in bad faith. There is a clear intention by the Respondent to benefit from the Complainants reputation and products, as mentioned before, creating confusion with the Complainants’ trademark and products as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Panel finds that the combination of the words “tu tienda” with the Complainants’ trademark NATURA is not randomly constituted and as such is evidence of bad faith from the Respondent.
The Complainants have argued the Respondent lacks authorization from the Complainants to use their trademark, to which the Respondent has not presented evidence in contrary.
Based on the above, including the Respondent’s lack of rights or legitimate interests in the Domain Name, the Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy are fulfilled. 7. Decision
For 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 Complainants.
Daniel Peña
Sole Panelist
Dated: February 16, 2012
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