The Complainant is Benefit Cosmetics LLC of San Francisco, California, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondents are Zhuang Ming / Zhuang Ou / Aojie Ou of Putiang, FuZhou, China. 2. The Domain Names and Registrars
The disputed domain names and are registered with Shanghai Yovole Networks, Inc.
The disputed domain name is registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2012. On October 18, 2012, the Center transmitted by email to Shanghai Yovole Networks, Inc. a request for registrar verification in connection with the disputed domain names and . On October 22, 2012, Shanghai Yovole Networks, Inc. transmitted by email to the Center its verification response confirming that the Respondent Zhuang Ming is listed as the registrant and providing the contact details. On October 18, 2012, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name . On October 19, 2012, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondents Zhuang Ou / Aojie Ou are listed as the registrants and providing the contact details.
On October 23, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On October 23, 2012, the Complainant confirmed its request which was included in the Complaint that English be the language of the proceeding. The Respondents did not make any submissions regarding the language of the proceeding.
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 proceeding commenced on October 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2012. The Respondents did not submit any Response. Accordingly, the Center notified the Respondents’ default on November 20, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on November 29, 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 A. Complainant
The Complainant is a company incorporated in the State of Delaware in the United States of America and the owner of more than 100 registrations in more than 60 countries worldwide for the trade mark BENEFIT (the “Trade Mark”), including in the United Kingdom of Great Britain and Northern Ireland, and in China, where the Respondents are based. B. Respondents
The Respondents are individuals with addresses in China. C. The Disputed Domain Names
The disputed domain name was registered on July 26, 2012.
The disputed domain name was registered on October 9, 2012.
The disputed domain name was registered on March 29, 2011. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is a well-known global cosmetics company founded in San Francisco, California. The Complainant has been using the Trade Mark in relation to its cosmetics products for more than twenty years, and has been selling its cosmetics products under the Trade Mark in the United Kingdom since 1997, and in China since 2007. The Complainant’s annual global sales under the Trade Mark amount to more than USD 350 million.
The Complainant sells its cosmetics products under the Trade Mark exclusively through authorised retailers, its own stores, and online via its own websites and via the websites of its exclusive authorised retailers.
The disputed domain names are confusingly similar to the Trade Mark. They comprise the Trade Mark in its entirety, together with the non-distinctive words “makeup”, “in”, “uk” and “online”, which, as generic terms describing the Complainant’s products, or the place or manner in which they are offered for sale by the Respondents, serves if anything to exacerbate the likelihood of confusion.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated with or authorised by the Complainant in any way and is not commonly known by the disputed domain names.
The disputed domain names have been linked to an unauthorised English language website (the “Website”) which:
(1) Features the Complainant’s stylised BENEFIT SAN FRANCISCO logo at the header of each page;
(2) Offers for sale what appear to be the Complainant’s BENEFIT makeup products;
(3) Uses wording such as “online benefit makeup UK outlet”; and
(4) Contains numerous copyright protected images taken from the Complainant’s own website, including the Complainant’s iconic mannequins and various other distinctive advertising and marketing materials that are an integral part of the Complainant’s brand identity.
The Respondents have registered and are using the disputed domain names in bad faith because, by using the disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Website, by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Website. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain names is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Website is in English and targets customers in the United Kingdom;
(2) The disputed domain names are English language domain names; and
(3) This demonstrates the Respondents are adept in the English language.
The Respondents did not file any submissions with respect to the language of the proceeding and did not file a Response.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
It is clear from the content of the Website that the Respondents are proficient in the English language (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
The Panel therefore finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondents are conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondents would be unduly prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2 Consolidation of Respondents
UDRP jurisprudence suggests consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve (Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281).
In the present case, the registrant in the WhoIs record at the time of filing of the amended Complaint in respect of the disputed domain names and is the same person, Zhuang Ming, and the listed contact information in respect of both of these disputed domain names is the same. The registrants in the WhoIs record at the time of filing of the amended Complaint in respect of the disputed domain name are Zhuang Ou and Aojie Ou. The listed contact information in the WhoIs records for all three of the disputed domain names shows addresses in Fujian province, China, and similar email addresses using the same email service provider, .
The disputed domain names and share the same Registrar, Shanghai Yovole Networks, Inc.
Each of the disputed domain names comprises the Trade Mark in its entirety, and each has been linked to the same Website.
All of the above clearly suggests to the Panel common control is being exercised over the disputed domain names.
In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Respondents in respect of each of the disputed domain names is procedurally efficient and equitable to all the parties.
Accordingly, the Panel, having regard to all relevant circumstances, concludes that consolidation of the Respondents1 is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in this area. 6.3 Decision
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain names by over 20 years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
The disputed domain names contain the Trade Mark in its entirety. The Panel concludes that the use of the generic words “makeup”, “in”, “uk” and “online” does not serve to distinguish the disputed domain names from the Trade Mark in any way.
The Panel finds that the disputed domain names are confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in a disputed domain name:
(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 (as an individual, business, or other organisation) has been commonly known by the domain name even if the Respondent has acquired no trade mark 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 trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by over 20 years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have been used in respect of the Website which features prominently and in numerous places the Trade Mark, uses the Complainant’s stylised BENEFIT SAN FRANCISCO logo, offers for sale unauthorised BENEFIT cosmetics under the Trade Mark, and unlawfully reproduces images taken from the Complainant’s website. Such use cannot possibly give rise to rights or legitimate interests in the disputed domain names.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making any legitimate non-commercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
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 or service on the Respondent’s website or location.
The Panel finds that the Respondent has registered and used the disputed domain names in order to pass off the Website as a website of or licensed by the Complainant, for commercial gain. Furthermore, the manner of the Respondent’s use of the Website, as detailed above, amounts to strong evidence of bad faith.
At some stage following the filing of the Complaint, the Website has been taken down by the Respondent. As at the date of this Decision, the disputed domain names are not being actively used by the Respondent. In all the circumstances of this case, the Panel finds this constitutes further evidence of bad faith.
For the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been 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 names , and be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: December 13, 2012
1 For ease of reference, the Panel shall refer to the Respondents in the singular for the remainder of this Decision.
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