The Complainant is Mesosystem, S.A. of Porto, Portugal, represented by José Motta Veiga, Portugal.
The Respondent is LeaseD of Palos Park, Illinois, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2013. On April 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 24, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 26, 2013. Upon the Complainant’s request, the proceedings were suspended until May 6, 2013. Further to the Complainant’s request, the proceedings were reinstituted on May 6, 2013.
The Center verified that the Complaint together with the amended 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 May 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2013.
On five different occasions, namely on April 24 and 26, 2013, and on May 7, 8 and 17, 2013, single-line statements apparently emanating from the Respondent were sent by email to the Center which indicated that the Respondent wished the disputed domain name to be transferred to the Complainant. Following the second occasion of such communication to the Center, the Complainant requested a suspension of proceedings to allow the parties to settle. However, the Respondent did not transfer the disputed domain name and, upon the Complainant’s request, a notice of reinstitution of the proceedings was issued by the Center on May 6, 2013. The Complainant did not request a further suspension of proceedings following the further emails sent by the Respondent to the Center.
The Respondent did not submit any formal response in these proceedings. Accordingly, the Center notified to the parties the commencement of panel appointment process on June 5, 2013.
The Center appointed Francine Tan as the sole panelist in this matter on June 17, 2013. 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 states that it is a Portuguese company which was incorporated in 2007, which engages in the field of cosmetics and medical supplies. The Complainant’s goods are marketed worldwide.
The Complainant has the following Portuguese trade mark registrations:
- No. 465876, MCCM, since April 2010;
- No. 403547, MESOSYSTEM, in classes 3 and 5, since 2006;
- No. 418930, mesosystem, in class 39 since 2007;
- No. 433269, MESOSYSTEM MEDICAL COSMETICS, in classes 3 and 5 since 2008 ;
- No. 441804, MESOSYSTEM MEDICAL DEVICES, in classes 3, 5, 10, and 44, since 2008; and
- No. 508.692, MCCOSMETICS, in classes 3 and 5, since January 2013.
The Complainant invested heavily in promoting the MCCM mark and used the mark extensively on its products, product packages, advertisements, in documentaries and at exhibitions. The Complainant also invested significantly by way of promotions via the electronic and online medium such as the Internet. The mark MCCM was chosen by the Complainant to be used and promoted worldwide with its cosmetic products, since 2009. Since around 2008/2009, a restyling of the image of the Complainant’s company was commenced to extensively incorporate the trade mark MCCM on all its products, product packages, advertisements, documentaries and at exhibitions. The Complainant owns the domain name .
The disputed domain name was created on September 18, 2009. The evidence on the record suggests that the Respondent registered the disputed domain name at some point after July 2010, after the original registrant had refused to transfer the disputed domain name to the Complainant.
The disputed domain name was offered for sale by the Respondent through God as a “premium domain name” at the price of USD 980.00. The website to which the disputed domain name resolves consists of a parking page with links to the Complainant’s competitors’ sites. 5. Parties’ Contentions A. Complainant
Firstly, the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights. The Complainant holds the rights over the trade marks MCCM and MCCOSMETICS, all connected with cosmetics and medical supplies.
The disputed domain name incorporates the MCCM mark as a whole and therefore may be confused with the MCCM and MCCOSMETICS trademarks which belong to the Complainant. The addition of the word “cosmetics”, a descriptive term, specifies what is to be found on the corresponding website and does not serve to distinguish the disputed domain name from the Complainant’s MCCM and MCCOSMETICS trademarks.
Secondly, the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant did not license or otherwise permit the Respondent to use its MCCM and MCCOSMETICS marks or any variation thereof. The Respondent has no right over the MCCM or MCCOSMETICS marks which bear no resemblance to its own name and which do not correspond to its business activity. The Respondent has never used the MCCM mark to offer products and services and has not been commonly known by the disputed domain name. The Respondent’s selection of the disputed domain name cannot be ascribed to a mere coincidence and it has offered no reasons for its registration thereof. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. There is no evidence of the Respondent’s prior use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Thirdly, the disputed domain name was registered and is being used in bad faith: (i) the Respondent knew of the Complainant and its use of the MCCM and MCCOSMETICS marks at the time it registered the disputed domain name; (ii) it is using the disputed domain name only by way of providing a link to other sites with the same activity as the Complainant and is offering to sell the disputed domain name to the highest bidder; (iii) the disputed domain name is likely to mislead or confuse the public as to its source of origin, and the public is likely to believe that the Complainant authorized or endorsed the Respondent’s use or registration of the disputed domain name.
The circumstances indicate that the disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name (USD 980.00 in this case). The Respondent is also intentionally attempting to attract for commercial gain, Internet users to the Respondent’s web site 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 web site or location or of a product or service on the Respondent’s web site or location. B. Respondent
As indicated in Section 3 (the Procedural History), the Respondent submitted several informal communications to the Center. However, the Respondent did not file a Response to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4 (a) of the Policy provides that the Complainant shall have to establish the presence of each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established it has rights in the trade mark MCCM. The disputed domain name, is, in the Panel’s view, confusingly similar to the Complainant’s trade mark, MCCM. The MCCM trade mark is incorporated in its entirety within the disputed domain name except that it contains an additional term, “cosmetics”. The addition of this descriptive term, “cosmetics”, is, nonetheless, inadequate to overcome the confusion with the Complainant’s MCCM trade mark. It has been established in many previous UDRP panel decisions that the addition of a descriptive or generic term(s) to a trade mark in a domain name would not suffice in removing the confusing similarity. As noted in paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), “Panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name. The principal exception that some panels have found in certain cases is where a trademark (especially one of a descriptive nature) is incorporated or subsumed within other words or textual elements so that the trademark is not clearly the dominant component of the domain name.”
In this case, the dominant component in the disputed domain name is “mccm”. Bearing in mind the goods that the Complainant deals in, namely cosmetics, the addition of the word “cosmetics” in the disputed domain name all the more fails to distinguish the disputed domain name from the Complainant’s mark, but adds to the confusing similarity.
The Panel therefore finds that the Complainant has established paragraph 4(a)(i) of the Policy. In view of this finding, the Panel does not consider it necessary to comment on whether the disputed domain name is confusingly similar to the MCCOSMETICS trade mark. B. Rights or Legitimate Interests
It has been acknowledged and recognized by panelists in many earlier UDRP decisions that there is an inherent difficulty in having to prove a negative, i.e. the absence of rights or legitimate interests on the respondent’s part. In accordance with established practice, the Complainant is therefore only required to establish a prima facie case showing a lack of rights or legitimate interests on the Respondent’s part, after which the burden shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name. (See paragraph 2.1 of the WIPO Overview 2.0)
The Complainant has established a prima facie that the Respondent is not commonly known by the disputed domain name, or that it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. The Respondent has been using the disputed domain name in relation to a parking page with links to competitors or other websites. Whilst a website with sponsored links is not illegitimate per se, the Panel finds in the circumstances of this case that the Respondent is not making a bona fide offering of goods or services and that this is not a legitimate noncommercial or fair use of the disputed domain name.
Moreover, the Respondent’s decision not to contest the claims made by the Complainant but instead to request, on the said five occasions for the Center, to have the disputed domain name transferred to the Complainant, gives supports to the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Although no steps were ultimately taken by the Respondent to effect this expressed intention, the Panel considers the statements made to amount to an admission and acceptance by the Respondent that it has no rights or legitimate interests in the disputed domain name.
As the Respondent has not refuted the prima facie case established by the Complainant, the Panel concludes that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
The Panel therefore finds that the Complainant has established paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The disputed domain name has not been put to any proper commercial use by the Respondent, having merely been parked whilst, one may reasonably conclude, generating revenue from the sponsored links. The circumstances set out in paragraph 4(b) of the Policy, the existence of any of which would lead to a finding of bad faith registration and use, are not exhaustive and the Panel is at liberty to consider all the surrounding circumstances of this case and make a finding of bad faith registration and use even if they may not fall neatly within those defined in paragraph 4(b).
The Respondent’s passive holding of the disputed domain name which incorporates the Complainant’s MCCM trade mark and the word “cosmetics” which is a description of the goods the latter deals in strongly suggests that the Respondent was well aware of the Complainant and its MCCM products, when it registered the disputed domain name. There has been no obvious use of the disputed domain name for a legitimate commercial purpose. The Panel is of the view that the aforesaid and the Respondent’s conduct in offering the disputed domain name for sale on “God” and in subsequently sending the series of email messages to the Center which reflect the Respondent’s submission to the Complainant’s assertions of a rightful claim to the disputed domain name, are cumulative circumstances from which it can be concluded that the disputed domain name was registered and used in bad faith.
The Panel therefore finds that the Complainant has established 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.
Francine Tan
Sole Panelist
Date: July 24, 2013
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