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 Respondent is Chuanyi Net Technology of Sanming, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2012. On October 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 5, 2012, the Center transmitted an email to the parties in both Chinese and English languages regarding the language of proceedings. On November 6, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
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 November 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2012.
The Center appointed Jonathan Agmon as the sole panelist in this matter on December 18, 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 Complainant, Benefit Cosmetics LLC of San Francisco, is a United States company that engages in manufacturing and selling cosmetics products under the BENEFIT brand.
The Complainant’s cosmetics are sold in numerous countries, including China, under the BENEFIT trademark for more than 20 years and has global annual sales of more than USD 350 Million.
The Complainant is the owner of multiple worldwide trademark registrations for the mark BENEFIT. For example: Chinese registration No. 1345112 – BENEFIT, with the registration date of December 21, 1999;
United States of America trademark registration No. 2799579 – BENEFIT, with the registration date of December 30, 2003; International trademark registration No. 1062271– BENEFIT, with the registration date of October 21, 2010, designating to Iceland, Liechtenstein and Monaco; International trademark registration No. 1076049 – BENEFIT, with the registration date of April 14, 2011, designating to China, and many others.
The Complainant and its affiliates have also developed a presence on the Internet and are the owners of numerous domain names that consist of the BENEFIT mark. For example: , and .
The disputed domain name was created on May 25, 2011.
The disputed domain name currently resolves to an inactive webpage displaying a “parked website” page.
The disputed domain name used to resolve to an online marketplace that offered for sale products that seem to be of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant argues that together with its affiliated companies it is one of the world’s premiere cosmetics companies. The Complainant argues that it has strong rights in the BENEFIT trademark.
The Complainant further argues that in order to ensure only genuine Benefit products are offered to consumers, it sells its BENEFIT branded products exclusively through authorized retailers or its own stores and catalogs.
The Complainant further argues that it started using the BENEFIT trademark almost 20 years before the Respondent had registered the disputed domain name.
The Complainant further argues that the disputed domain name incorporates, in its entirety, the Complainant’s BENEFIT trademark and the Complainant’s Benefit Cosmetics trade name.
The Complainant further contends that the terms “cosmetic” and “sale” with the BENEFIT trademark does nothing to distinguish the disputed domain name from the Complainant’s trademark as these terms clearly relate to the Complainant and its business. The Complainant further argues that these terms only exacerbate the likelihood of confusion.
The Complainant further argues that there is no evidence that the Respondent has rights or legitimate interests in the disputed domain name.
The Complainant further argues that the Respondent registered the disputed domain name after the Complainant had made extensive use of the BENEFIT trademark and after the Complainant registered its BENEFIT trademarks around the world.
The Complainant further argues it had never licensed or permitted the Respondent to use its trademark or to apply for a domain name incorporating it.
The Complainant further argues that the Respondent did not sell the Complainant’s authentic products on the website at the disputed domain name. The Complainant argues that the Respondent’s only use of the disputed domain name was to collect the names, email addresses, credit cards number and other personal contact details from unsuspecting visitors to the site and to deliver malicious software to such visitors.
The Complainant further contends that the Respondent failed to include a disclaimer that would notify the site users that it is not affiliated with the Complainant. The Complainant further argues that this fact gives the site users the impression that the website at the disputed domain name is an official site of the Complainant.
The Complainant further argues that the Respondent registered and used the disputed domain name in bad faith. The Complainant argues that it is inconceivable that the Respondent was unaware of the Complainant’s BENEFIT trademark when it registered the disputed domain name, particularly in light of the Complainant’s wide recognition.
The Complainant further argues that the disputed domain name was registered and used by the Respondent to distribute malware. The Complainant further contends that this conduct demonstrates the Respondent’s bad faith and more than that it will also damage the Complainant’s reputation and business.
The Complainant further argues that the Respondent’s attempt to impersonate it by using misleading text in the disputed domain name, together with the extensive use of its BENEFIT trademark and its promotional material as well – establish the Respondent’s bad faith in registering and using the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Issue – Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings should be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
Upon deciding on the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain name consists solely of the English words: “benefit”, “cosmetic” and “sale”;
b) The disputed domain name used to resolve to a website that operates while using the English language but not Chinese;
c) The Respondent communicated with the Complainant’s representatives in the English language;
c) The Respondent did not object to the Complainant’s request that English be the language of proceeding.
Upon considering the above, the Panel concludes, in this circumstance, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its Decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant is the owner of multiple worldwide trademark registrations for the mark BENEFIT. For example: Chinese registration No. 1345112 – BENEFIT, with the registration date of December 21, 1999; United States of America trademark registration No. 2799579 – BENEFIT, with the registration date of December 30, 2003; International trademark registration No. 1062271 – BENEFIT, with the registration date of October 21, 2010, designed to Iceland, Liechtenstein and Monaco; International trademark registration No. 1076049 – BENEFIT, with the registration date of April 14, 2011, designed to China, and many others.
The disputed domain name integrates the Complainant’s BENEFIT trademark practically in its entirety, as a dominant element.
The disputed domain name differs from the BENEFIT trademark by the additional terms “cosmetic” and “sale” and the gTLD suffix “.com”.
The additional words “cosmetic” and “sale” do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s BENEFIT trademark, as they are descriptive dictionary words that refer to the nature of the goods and services regularly provided by the Complainant under its BENEFIT trademark, and are therefore insignificant per se.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red BullGmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
Also, the addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity in this case. (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the BENEFIT trademark at least since the year 1999. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.
The disputed domain name currently leads Internet users to a parked website. The Complainant submitted evidence showing that the disputed domain name used to lead Internet users to a website offering the Complainant’s products for sale, while using the Complainant's trademark and displaying the Complainant’s logo, without the Complainant’s authorization.
The Respondent’s use of the disputed domain name, which resolved to a website that was designed to look like a website associated with the Complainant and promote goods similar or identical to the goods being offered by the Complainant is (and additionally for the asserted purpose of obtaining private information and installing malware) clear evidence, in the Panel’s view, that the Respondent registered and used the disputed domain name with knowledge of the Complainant and of the use the Complainant is making of its trademark and intended to trade off the value of these. The Respondent’s actions therefore constitute bad faith. (See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”).
In light of the Complainant’s registered trademark and the Respondent’s use of the disputed domain name, the Panel finds that the use of the disputed domain name, which is confusingly similar to the Complainant’s trademark, creates likelihood that Internet users would be confused and identify the Respondent as either associated or affiliated with the Complainant.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name and the Respondent’s use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 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 Complainant.
Jonathan Agmon
Sole Panelist
Date: December 31, 2012
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