The Complainant is Artemis Suisse SA of Herisau, Switzerland, represented by Zulauf Bürgi Partner, Switzerland.
The Respondent is Isim Tescil.NET of Istanbul, Turkey / Hamza Sarıçiçek of Kayseri, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with FBS Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2014. On February 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 12, 2014, 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 February 18, 2014, communication 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 February 19, 2014.
On February 18, 2014, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On February 19, 2014, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
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 February 24, 2014. On the same date, the Center informed the parties that, given the provided submissions and circumstances of this case, it had decided to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Turkish; 3) appoint a Panel familiar with both languages mentioned above, if available. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2014.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on March 25, 2014. 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 a Swiss producer of high-end cosmetics and was founded in July 2005. It claims that it is active not only in Switzerland but also in other parts of Europe and Turkey and intends to expand its business to the United States of America, Canada, Japan, China and Australia.
The Complainant is the owner of trademarks containing the element ARTEMIS, including International Registration no. 235285 ARTEMIS, registered on September 5, 1960 for perfumery and cosmetics products, International Registration no. 966142 ARTEMIS OF SWITZERLAND (device), registered on April 16, 2008, and International Registration no. 1037202 ARTEMIS OF SWITZERLAND, registered on March 30, 2010 for cosmetics and protected in the European Union, United States, Australia, Japan and others.
The Complainant is the owner of the domain name under which the Complainant promotes its products in German and English languages.
The Respondent has registered the disputed domain name on September 5, 2013. 5. Parties’ Contentions A. Complainant
The Complainant argues that the sole difference between its trademark ARTEMIS and the disputed domain name is the addition of the highly descriptive terms “beauty club” and the generic Top-Level Domain (“gTLD”) “.com”. The Complainant adds that ARTEMIS is distinctive for cosmetics and enjoys a wide range of trademark protection. The Complainant asserts that its trademarks ARTEMIS and ARTEMIS OF SWITZERLAND and the disputed domain name are similar.
The Complainant states that it discovered the existence of the disputed domain name on December 2, 2013. When visiting the website displayed under the disputed domain name, it noticed that the Respondent offers beauty services and beauty products.
The Complainant states there is no evidence that the Respondent is or was commonly known by the name “Artemis” or “Artemis Cosmetics” in the past, and that the Respondent has not established an interest in that name.
The Complainant also states that on December 2, 2013, it sent to the Respondent a cease and desist letter, although the email letter was received by the Respondent, no answer had yet been received at the time the Complaint was filed.
The Complainant asserts that there is no legitimate reason why the Respondent registered the disputed domain name, that it is not a licensee of the Complainant and that it has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that the Respondent’s choice of the disputed domain name indicates that the Respondent tries to attract, to its website, Internet users who are legitimately searching for the goods of the Complainant, and that this may likely create confusion with the Complainant’s trademarks by implying the Complainant’s sponsorship, affiliation or endorsement of products promoted on the Respondent’s website.
According to the Complainant, the avoidance of any communication also is prima facie evidence of bad faith on the part of the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
According to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, the Complainant requested for English to be the language of the proceeding. It is without question that the registration agreement for the disputed domain name was made in the Turkish language. However, the Respondent did not submit any comment regarding the language of proceeding. In addition, the Complainant is not able to communicate in Turkish and therefore, if the Complainant were to submit all documents in Turkish, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. The Panel also notes that the disputed domain name comprises the word “beauty” which is an English word. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11(a) of the Rules, that English shall be the language of this administrative proceeding.
Paragraph 15(a) of the Rules requires the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The disputed domain name incorporates the Complainant’s trademark and company name ARTEMIS in its entirety in association with the words “beauty” and “club”. In this type of combination it is clear that the trademark ARTEMIS stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.
Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g.,Telstra Corporation Limited v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l.,WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0282.
The addition of the generic words “beauty” and “club” increases the confusing similarity because they refer to a type of activity that is internationally known in the cosmetic industry.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the trademark ARTEMIS and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met. C. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain name. The Respondent has failed to demonstrate such rights or legitimate interests. The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods or services by its use of the disputed domain name and has not rebutted the Complainant’s prima facie case. Nor has the Respondent shown that it has been commonly known by the disputed domain name.
The Panel further finds that given the use made of the disputed domain name, when the Respondent registered the disputed domain name it must have known the ARTEMIS trademark of the Complainant
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the requirement of paragraph 4(a)(ii) of the Policy is met. D. Registered and Used in Bad Faith
The Panel is of the opinion that the Respondent must have been aware of the Complainant and its trademark rights when it registered the disputed domain name. The Panel is prepared to infer that the Respondent is taking advantage of the goodwill and reputation of the Complainant’s trademark for commercial gain and it is well established that such use is evidence of bad faith. Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Universal Spheres Inc.,WIPO Case No. D2010-0822. Further, such use clearly threatens to divert actual clients away from the Complainant and disrupt the Complainant’s business.
As in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Ladbroke Group Plc v. Sonnoma International LDC,WIPO Case No. D2002-0131, after examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly the Panel finds in favor of the Complainant on the third element 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.
Dilek Ustun Ekdial
Sole Panelist
Date: April 10, 2014
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