The Complainant is BCS Business Consulting Services, Pte Ltd. of Los Angeles, California, United States of America (“US”), represented by TraskBritt, P.C., US.
The Respondent is Sakata LLC, Miki Sakata of Gumma, Japan. 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 September 3, 2013. On September 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2013, 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.
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 September 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2013.
The Center appointed Douglas Clark as the sole panelist in this matter on October 14, 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 is the proprietor of the trademark ETHOCYN in a number of countries. Of most importance it obtained registrations for ETHOCYN in Germany in 1993, in Taiwan Province of China in 1997 and Canada in 1998 for, inter alia, cosmetic products.
The disputed domain name was created on August 23, 1998 and registered with the current registrant on November 29, 2011. The website to which the disputed domain name previously resolved to had advertised cosmetic products under the brand “Ethocyn Products” in English. Since 2012, the website under the disputed domain name has resolved to a website in Japanese offering jobs to “chat girls” to chat on line with paying customers. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its registered trademark ETHOCYN. It is composed of the Complainant’s trademark ETHOCYN and the generic term “products”.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name as it has not made any bona fide use of the disputed domain name. The Complainant contends that the Respondent has no commercial relationship with the Complainant and it is not a licensee.
The Complainant contends that the disputed domain name was registered and was used in bad faith with the intention of diverting Internet users to its website for the sale of cosmetic products. Further, the Complainant alleges that the current the use to recruit chat girls by promoting adult services illustrates also use in bad faith. The Complainant cites the following cases Singapore Airlines Limited v. Robert Nielson (trading as Pacific International Distributors),WIPO Case No. D2000-0644; Nokia Corporation v. N a.k.a IBCC,WIPO Case No. D2000-0102; Jafra Cosmetics, S.A. de C.V. v. Jafraproducts Admin,WIPO Case No. D2006-0416; and Estee Lauder Cosmetics Ltd.; Make-Up Art Cosmetics Inc. v. Telmex Management Services,WIPO Case No. D2001-1428. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
This is a relatively straightforward case which, in the Panel’s opinion, does not require detailed discussion.
The only issue that has caused the Panel any concern is the delay in bringing these proceedings given that the disputed domain name has been registered for 15 years.
Paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides:
“Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.
However: Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith. A small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant.”
In this case the Complainant stated it had only recently discovered the registration of the disputed domain name. No Response or evidence has been filed by the Respondent. Moreover, it appears that the Registrar confirmed that the current Respondent has registered the disputed domain name on November 29, 2011.
In the absence of any Response by the Respondent and the statement of the Complainant that it recently discovered the disputed domain name, the Panel will not take the delay into account. A. Identical or Confusingly Similar
The disputed domain name is composed of the Complainant’s registered trademark ETHOCYN and the generic word “products”.
According to previous UDRP decisions, the “addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP” (see paragraph 1.9 of the WIPO Overview 2.0).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark ETHOCYN.
The first element of the UDRP is made out. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
Since the Complainant has made out a prima facie case that the Respondent has not rebutted, the Panel finds that the second element of the UDRP is made out. C. Registered and Used in Bad Faith
The Panel also finds that the disputed domain name was registered in bad faith and is being used in bad faith.
The previous use of the disputed domain name to sell cosmetic brings this case within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The apparent current use to advertise for chat girls is more problematic to determine bad faith use. In Estee Lauder Cosmetics Ltd.; Make-Up Art Cosmetics Inc. v. Telmex Management Services, supra, the panel held:
“Further, as emphasized above, the active website to which the Infringing Domain Name resolves offer adult-escort services. Numerous ICANN panels have held that registering and using a infringing domain name in connection with a website that offers adult services or material is evidence of bad faith.”
Unlike that case and the other cases cited by the Complainant it seems that no services are being offered on the site. If there had not been clear bad faith use in the past, the Panel would have had to consider in more detail this ground.
However, given the previous bad faith use the Panel is willing to accept that the continued use is also in bad faith.
The third element of the UDRP is therefore made out. 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.
Douglas Clark
Sole Panelist
Date: October 31, 2013
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