Complainant is Cosmetic Warriors Limited of Dorset, United Kingdom of Great Britain and Northern Ireland, represented by SafeNames Ltd., United Kingdom.
Respondent is Kogito Pte Limited of Singapore. 2. The Domain Name and Registrar
The disputed domain name , and (the “Domain Names”) are registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the“ Center”) on September 11, 2012. On September 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 13, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Domain Names.
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 Respondent of the Complaint, and the proceedings commenced on September 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 15, 2012.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on October 30, 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
Complainant, Cosmetic Warriors Limited, is a company founded in 1994, and organized under the laws of the United Kingdom. It adopted the name ”Lush” in April 1995.
Complainant sells bath, hair care, and beauty products made from natural ingredients, which are sold from 798 stores in 46 countries, including 2 in Singapore.
Complainant has numerous trademark registrations for its LUSH mark, including registrations in the European Union, United Kingdom, United States and Singapore. In addition to registered trademarks, Complainant, its affiliates, subsidiaries and associated companies have registered over 200 domain names, which incorporate the term LUSH within various gTLDs and ccTLDs, including , , , , , amongst others.
Respondent registered the Domain Name in August 2011, while and were both registered in October 2011. 5. Parties’ Contentions A. Complainant
Complainant states that there are various characteristics it has adopted, which distinguish it from other cosmetic retailers. Complainant has a noticeable international presence with its LUSH brand, particularly in relation to its stores, which are known for their unique layouts and distinctive in-store experience. Under its LUSH brand, it has also promoted a strong stance against animal testing and is known globally as a campaigning company as well as a cosmetics company. Complainant has a strong stance on eco-friendly, ethical, fair trade products and has constantly partnered with the most sustainable suppliers to bring the best of raw material into their products. This year alone, Complainant has won numerous awards for its products, which include “Harper’s Bazaar Hair Magazine Award” and an Award with “Women’s Weekly” magazine.
Complainant has expended a substantial amount of effort in advertising and promoting its LUSH brand and as a result has acquired substantial goodwill in the brand. Complainant has seen substantial revenue growth and has achieved worldwide recognition since its inception in 1995, with an annual turnover of over GBP 34,000,000 in the year 2000, to in excess of GBP 200,000,000 in 2011. Complainant has accomplished a strong customer community through various social media platforms, with its North America Facebook page boasting a community of 362,000 users, a Twitter page with over 51,000 followers and a Youtube page with over 20,000 subscribers.
Identical or confusingly similar to a trademark:
Complainant asserts that it has rights and interests in the term “Lush”, which it uses in connection with cosmetic preparations and affiliated products in the nature of skin creams and moisturizers, perfumes, bath preparations, hair products, and retail store services. Complainant refers, inter alia, to its LUSH trademark registrations in the European Union, the United Kingdom, United States and Singapore to demonstrate trademark rights, as well as to its numerous domain name registrations. Complainant’s use of the term “Lush” for over 17 years should be considered to give rise to common law rights in the term and as such Complainant also seeks to rely on such rights.
Complainant contends that its trademarks and domain names were registered before registration of the Domain Names and further support Complainant’s assertions that the Complainant has rights in its mark. Complainant’s rights are incontestable and constitute conclusive evidence of its ownership of the LUSH trademark and exclusive rights to use the mark in connection with the stated class of goods and services.
Complainant states the Domain Names are confusingly similar to the Complainant’s trademark as they feature the LUSH mark in their entirety, merely adding the geographical term Singapore. The addition of a hyphen and the word Singapore does not add a distinctive element to the Domain Names and does not render them dissimilar to Complainant’s trademark. Instead, this addition accomplishes the complete opposite, as it reinforces the connection with the trademark signifying it as a geographical location, which identifies Singapore as one of the places where Complainant operates. When considered in this context the Domain Names are confusingly similar to Complainant’s trademark.
Rights or legitimate interests:
Complainant asserts that Respondent’s use of the Domain Names does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use under the Policy. Because Respondent has not been licensed by Complainant, is not affiliated with Complainant in anyway whatsoever, or authorized to use the LUSH mark, Respondent’s use of the Domain Names cannot be regarded as legitimate. Respondent would be unable to argue that the term has been used in relation to its descriptive meaning as the content of the webpage clearly points to Complainant as the provider of the goods on the website. The Domain Name resolves to a website featuring Complainant’s logos and products, prominently displayed throughout, and although the site gives the pretense that it is committed to promoting Complainant’s products, there are various banners and links displayed, which redirect users to goods and services competitive to those of Complainant. Complainant asserts there is no evidence that indicates demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. The reason being is that for Respondent to be able to demonstrate that operation of the Domain Names is legitimate, one factor Respondent would need to explain is why it selected Complainant’s trademark to offer competing goods to consumers. Moreover, Respondent would be unable to rely on noncommercial or fair use of the Domain Names, as its use is clearly to benefit financially. It is likely that Respondent is receiving a financial benefit through affiliate revenue, which it receives by redirecting traffic intended for Complainant to its competitors. Such use cannot be considered legitimate and ultimately deprives Respondent’s business operation of that legitimacy.
Complainant also asserts that Respondent cannot rely on the defense that it has been commonly known as “Lush Singapore” or “Singapore Lush”. The publicly-available WhoIs reveals Respondent is known as “Kogito Pte Ltd”, which has no association with Complainant. Further, Complainant argues that Respondent could not make any legitimate use of the Domain Names given the fame, reputation and goodwill associated with Complainant’s brand. Respondent has demonstrated that it is not in a position of ignorance based on its lack of geographical proximity at the time of registration. Complainant’s brand was well known in Singapore. Having this knowledge, Respondent is obligated under paragraph 2 of the Policy to make sure that its domain registrations do not infringe on the rights of a third party. The unfair use of Complainant’s materials shows Respondent’s disregard for the Policy and Complainant’s trademark rights.
Registered and used in bad faith:
Complainant contends that Respondent, with actual knowledge of Complainant’s marks, registered the Domain Names. This is evident from the content of one of the websites at the Domain Names and the surrounding circumstances. On September 17, 2011, after months of speculation, Complainant made an official announcement from its “Lush Singapore” Facebook page promoting the return and grand opening of LUSH outlet stores in Wisma Atria, Singapore. Prior to this, Complainant operated its brand in Singapore beginning in 1998 with two large outlet stores in Wisma Atria and Suntec City, Singapore, for a period of four years.
It is the consensus view of UDRP panelists that when establishing bad faith, Respondent’s intent at the time of registration is an important element. Respondent’s aims and intentions are revealed through the content of the web pages at the Domain Names and the timing of its registration. Respondent registered two of the three Domain Names in October 2011, with the other registered in August 2011. Respondent clearly sought to capitalize on the publicized and much anticipated renewal of the LUSH brand in Singapore by offering unauthorized goods from its website, prominently displaying the LUSH logo throughout, and redirecting consumers to Complainant’s competitors through its various advertising links and banners. Adopting Complainant’s trademark as a domain name and promoting its services on the front page is much like posting a sign with another’s trademark in front of one’s (own) store. Complainant asserts that this conduct would not be acceptable in the real world and so should not be acceptable in cyberspace. On August 15, 2012, Complainant’s legal representative sent Respondent a cease and desist letter objecting to Respondent’s activities and providing notice of Complainant’s trademark rights; Respondent failed to respond to this letter.
Complainant contends that Respondent has registered the Domain Names for the purpose of disrupting and interfering with Complainant’s business, and in doing so, with the full intention and knowledge that that they would benefit commercially. The use of the LUSH mark with the addition of a geographic indicator was not incorporated for the reason of a creating a distinctive mark. Instead, the Domain Names have been used to compete with Complainant for consumers in the Singapore market. On entering the site found at the Domain Name , Respondent fails to disclaim affiliation with Complainant and uses language seeking to mislead consumers into believing that the site is the official producer of Complainant’s products. It is likely that a substantial number of Singaporean Internet users searching for Complainant’s website would type in the Domain Names operated by Respondent in view of the fact that Complainant’s promotional Facebook page is also known as “LUSH Singapore”. The visitor will be visiting the website in the expectation and hope that the address will correspond with a site operated or authorized by Complainant. In the case of the Domain Name , on entering the Domain Name into the web browser the visitor is presented with not only Complainant’s products but also competing operators.
Respondent cannot disclaim responsibility for the links that are provided on its website. Ultimately, Respondent alone is responsible for the content made available on its website and how the domain is used.
In the case of the Domain Name , the “COMING SOON” banner displayed is a continuing threat hanging over Complainant’s head that it should not have to endure. Through the action undertaken with the Domain Name , Respondent has made its intentions clear. And while the Domain Name does not resolve to an active website, inactivity does not prevent a finding of bad faith. Taking into account the current circumstances and evidence provided thus far in relation to the Domain Name , it is not possible to conceive of any plausible actual or contemplated use of the Domain Names by Respondent that would not be illegitimate.
Respondent’s improper and unauthorized use of the Complainant’s trademark diverts Internet users seeking Complainant’s official website. In conclusion, Respondent has blatantly attempted to capitalize on the Complainant’s goodwill by registering domain names almost identical to Complainant’s trademark and taking advantage of the confusion that is subsequently created. This in tandem with use to redirect to Complainant’s competitors can only mean that the Domain Names have been registered and used in bad faith. Complainant states that it has satisfied all elements of its claim; and Complainant respectfully requests that the Panel rule in its favor and issue an order requiring the Domain Names ; and be transferred to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to 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. Under paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) the Domain Names in issue are identical or confusingly similar to Complainant’s mark; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) are evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which if proved by Respondent may be evidence of Respondent’s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above. In this case, however, Respondent did not submit a Response. A. Identical or Confusingly Similar
Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Names are identical or confusingly similar to a trademark in which Complainant has rights. The Panel finds that the Domain Names are nearly identical to Complainant’s well-known LUSH mark, entirely incorporating the term while adding the geographic term “Singapore” (and in two instances a dash), which does not change the overall impression created by the term, but merely appears to highlight a geographic location, which identifies Singapore as one of the places where Complainant operates. Therefore the Panel concludes that Complainant has established this element of the Policy. B. Rights or Legitimate Interests
The Policy in paragraph 4(c) provides examples of circumstances that can be relied upon by a respondent to demonstrate the existence of rights or legitimate interests in a domain name. While Complainant has provided evidence of its rights in the LUSH trademark, the Domain Names were registered by Respondent only recently in August and September 2011. Based on Complainant’s submissions, the Panel considers that, at that time, Complainant had acquired a considerable reputation in its LUSH mark.
Complainant contends that Respondent has never been licensed or authorized to use Complainant’s marks. Moreover, there is no evidence that Respondent is commonly known by the Domain Names. The Panel can find no legitimate reason whatsoever why the Domain Names were selected by Respondent under the circumstances. Moreover, Respondent’s use of the Domain Names does not constitute a use in connection with a bona fide offering of goods and services, since Respondent’s website was directing Internet users to a commercial website offering links to services competitive to with those offered by Complainant or failed to resolve to an active website.
In line with previous UDRP decisions, the Panel considers that no rights or legitimate interests can be assumed in Respondent’s conduct, in view of the fact that the Domain Names are confusingly similar to Complainant’s LUSH trademark, there is no link between Respondent and the Domain Names, and the active domain among the Domain Names is used in connection with the promotion of competing services. See, Mudd (USA), LLC v. Unasi, Inc.,WIPO Case No. D2005-0727 (“Respondent is not using the website associated with the disputed domain name to offer its own products or services, but rather to show sponsored links and related categories links with the name of products competing with those of the Complainant..., with the clear purpose of diverting internet users through such links to other websites unrelated to the Complainant’s official website and selling products similar to the Complainant’s. Such use of the [complainant’s] trademark by the Respondent does not establish legitimate rights or interests of Respondent in the disputed domain name.”).
In the light of the above analysis, Complainant has established a prima facie case, supported by evidence that none of the circumstances establishing rights or legitimate interests apply. As stressed by many UDRP decisions, in such a case the burden of production shifts to Respondent to rebut the evidence. However, because Respondent failed to submit an answer to the Complaint, and given that the allegations of Complaint do not raise any substantial doubts, the Panel accepts as true the allegations set forth in the Complaint and finds that Respondent has no rights or legitimate interests in respect of the Domain Names. C. Registered and Used in Bad Faith
As mentioned above, Complainant has provided evidence of rights in its LUSH trademarks. It is therefore, in the Panel’s estimation, highly unlikely that Respondent registered the Domain Names in August and September 2011, without knowledge of Complainant’s marks. Instead, it appears that the Domain Names were intentionally registered, entirely incorporating Complainant’s mark with the geographical term, “Singapore”, to take advantage of the goodwill associated with Complainant’s marks. This choice of Domain Names, that are confusingly similar to Complainant’s registered and well-known LUSH marks, is itself a factor to be weighed as evidence that the registration of the Domain Names were in bad faith. See, Symantec Corporation v. Nadeem Qadir,WIPO Case No. D2005-1193; Reebok International Limited v. Domain Privacy Service, Hong Kong Names LLC,WIPO Case No. D2008-0359 (“A contributing bad faith factor in this case is the fact that a trademark search on the date of registration of the disputed domain name would have revealed Complainant’s long standing registrations in the United States of America.”); and Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith when respondent knew or should have known of complainant’s trademark and services at the time respondent registered the domain name).
Moreover, Respondent’s use of one of the Domain Names to direct visitors to a website that imitates Complainant’s own site, with links that direct visitors to competitive sites, evidences that Respondent registered the Domain Names to deceptively attract and then misdirect Internet users for Respondent’s own commercial gain, which constitutes bad faith. See, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 (registration for the purpose of profiting off of another’s trademark constitutes bad faith); and ITT Industries, Inc. v Katherine Kliszcz,WIPO Case No. D2000-1431 (use of domain name that contains complainant’s mark and a generic term deemed use in bad faith because “it is difficult to conceive how [respondent] could make use of the domain name without causing confusion with [complainant’s] registered hade trade mark.”).
Under the circumstances, the lack of active use of the Doman Names does not prevent the Panel from finding bad faith registration and use for the reasons previously discussed. See Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (finding respondent’s passive holding of the disputed domain name did not prevent a finding of bad faith under the totality of the circumstances).
In this case Complainant has provided evidence of Respondent’s bad faith registration and use of the Domain Names under the Policy. Due to the lack of any response from Respondent, there is has been no attempt at any rebuttal. The Panel therefore concludes that Respondent has registered and used the Domain Names in bad faith 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 Domain Names, , and be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Date: December 3, 2012
Full & Egal Universal Law Academy