The Complainant is Diamond Cosmetics, Inc., United States of America, represented by Robert M. Schwartz, United States of America.
The Respondent is Sylwia Golebiewska, née Swol, Poland, represented by Kancelaria Radcy Prawnego Jacek Sokolowski, Poland. 2. The Domain Name and Registrar
The disputed domain name is registered with NetArt Registrar Sp. z o.o. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2012. On October 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 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, and that the registration agreement was in Polish.
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”).
On October 30, 2012, the Center requested the Complainant provide satisfactory evidence of an agreement between the Complainant and Respondent as to the language of proceedings. On November 2, 2012 the Complainant responded requesting that the proceedings be in English. The Respondent responded in English on the same day requesting that the proceedings be in Polish. On November 8, 2012 the Center notified the Parties that the matter will provisionally proceed in English for the purposes of notification, and that the appointed Panel will upon appointment be empowered to make a final determination on the language of the proceeding and take any procedural steps it may consider necessary.
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 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2012. The Response was filed with the Center in Polish on November 30, 2012.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on December 14, 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.
The issue of the language of the proceeding has been addressed by the Complainant and by the Respondent, the former contending that it should be English and the latter that it should be Polish. The Registration Agreement is available on the Registrar's website in both language versions and a copy in English has been provided by the Complainant.
On this issue, the Panel considered the Complainant's and the Respondent's assertions.
The Complainant asserted that Section VII. 4. of the Registration Agreement specifically states that any disputes arising out of infringement of third party rights will be dealt with through documents annexed to the Registration Agreement, and that the binding version of these documents is the English version. Furthermore, the Complainant argued that conducting the proceeding in Polish would (i) impose on the Complainant the burden of retaining translation services, (ii) increase significantly the cost of the proceeding and (iii) cause delays. The Respondent responded that conducting the proceeding in English would increase its cost for the Respondent. However, the Respondent did not rebut the Complainant's assertions as to Section VII. 4. of the Registration Agreement and as to the likelihood of delays in the proceeding.
Pursuant to Paragraph 10(a) of the Rules, the Panel must ensure that the proceedings take place “with due expedition”. In the interest of deciding the case with due expedition, the Panel finds that the relevant clause of the Registration Agreement points to English as the language of the proceeding and accepts that conducting the proceedings in Polish would cause unnecessary delays. The Panel therefore determines that, pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English. 4. Factual Background
The Complainant, which is headquartered in the United States, is an industry leader in the field of cosmetics and nail care products throughout the world.
The Complainant is the owner of a trademark registration in the United States of America for DIAMOND COSMETICS, registered under No. 2,417,510 on January 2, 2001 by the US Patent and Trademark Office (the “Mark”), the registration certificate of which states that its first use in commerce was on March 1, 1986.
The Complainant operates a website using the domain name , which was created on October 9, 1999.
The disputed domain name was created on April 27, 2009. 5. Parties’ Contentions A. Complainant
(i) The Complainant submits that the disputed domain name reproduces the Mark in which the Complainant has rights, and is confusingly similar to the Mark insofar as it contains the Mark in its entirety, with the only difference being a hyphen between the two words composing the Mark. The Complainant also asserts that the addition of a hyphen does not serve to distinguish the disputed domain name from the Mark.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that the Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to register or use the Mark as a domain name. The Complainant also asserts that the Respondent is not commonly known by the disputed domain name.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name to disrupt the Complainant's business, to take advantage of its goodwill and to confuse Internet users as to the source, sponsorship, affiliation or endorsement of the websites to which the disputed domain name resolves. The Complainant submits further that the Respondent registered the disputed domain name to make commercial gains by offering and selling nail care and nail polish products which directly compete with those of the Complainant. It alleges that the Respondent's use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. These facts establish that the Respondent is using the domain name, with intent for commercial gain, to misleadingly divert consumers or to tarnish the Mark.
(iv) Furthermore, the Complainant submits that the Respondent acted in bad faith because it knew or should have known about the Complainant's rights in and to the Mark, which is well-known in the industry, when registering the disputed domain name.
(v) The Complainant requests that the disputed domain names be transferred to the Complainant. B. Respondent
(i) In its Response, the Respondent contends that it has rights and legitimate interests in the disputed domain name since April 2009, and that it has been granted a registration by the Polish Patent Office on November 18, 2010 (filed on November 28, 2008) for the trademark Diamond Cosmetics.
(ii) The Respondent asserts that it was not aware of any prior trademark registration when it filed its trademark application or when it created the disputed domain name.
(iii) The Respondent contends that the Mark and its trademark do not look alike in terms of their designs.
(iv) The registration of the disputed domain name by the Respondent was a natural consequence of its branded products becoming known in several European countries.
(v) The Respondent disputes the assertion of the Complainant that it is an industry leader.
(vi) The Respondent only became aware of the Complainant's existence when being notified its complaint. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the following required criteria for a transfer of the disputed domain name or other remedy have been met. A. Identical or Confusingly Similar
The disputed domain name is almost identical to the Mark owned by the Complainant, which it replicates entirely. Indeed, the two words of the Complainant’s DIAMOND COSMETICS Mark are replicated, with only a hyphen inserted between the two words in the disputed domain name.
Previous UDRP decisions have held that the addition of a hyphen does not serve to distinguish a disputed domain name from an asserted trademark and does not negate a finding of confusing similarity. See L'Oréal v. Wen Tao,WIPO Case No. D2012-0521; L'Oréal v. Zhongshengpengfei, zhaohui wu,WIPO Case No. D2012-0520; Burt's Bees, Inc. v. Traffic On a.k.a. Nick Kornzo,WIPO Case No. D2011-1759.
The Panel finds that the disputed domain name is confusingly similar to the Mark, which it incorporates in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent. Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Respondent did not submit in its Response any reason for selecting the disputed domain name.
The websites to which the disputed domain name resolves offer products which compete with the Complainant's.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name other than a copyright sign © and a date, 2009, appearing after the words Diamond Cosmetics on the homepage of the website, which is more likely than not to cause further confusion.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no affiliation to or authorization from the Complainant and (ii) is not commonly known by the disputed domain name.
There is no evidence that the Respondent is commonly known by a corresponding name or uses a corresponding name in a business.
In the circumstances, the Panel concludes that the Complainant has established the second requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Respondent failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name similar to the Mark.
It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that mark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA,WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin,WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Research in Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492.
The Panel considers that the notoriety of the Mark in the cosmetics and nail care industry makes it highly unlikely that the Respondent would have chosen to register the disputed domain names randomly, not knowing of the Complainant’s rights in the Mark prior to acquiring the disputed domain name. See Barney’s Inc. v. BNY Bulletin Board,WIPO Case No. D2000-0059; Kate Spade, L.L.C. v. Darmstadter Designs,WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028; SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092.
The Complainant has argued that the Respondent is not making a bona fide use of the disputed domain names, and has stressed that the disputed domain names are used to divert Internet users for commercial gain to competing goods.
In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
Finally, some UDRP panels have held that in certain circumstances, persons who are registering domain names have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc v. B.B. de Boer,WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex,WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name are in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case. 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.
Louis-Bernard Buchman
Sole Panelist
Date: January 2, 2013
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