The Complainants are Makeup Art Cosmetics Inc. of New York, New York, United States of America (“US”) and Estee Lauder Cosmetics Ltd. of Ontario, Canada, represented by Fross Zelnick Lehrman & Zissu, PC, US.
The Respondents are Justin Chen of China and Domains by Proxy, LLC of Scottsdale, Arizona, US (collectively, the “Respondent”). 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2014. On April 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 4, 2014, the Registrar transmitted by email to the Center its verification response confirming the underlying Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 15, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 5, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2014.
The Center appointed Edoardo Fano as the sole panelist in this matter on May 19, 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 paragraph 7 of the Rules.
The Panel has not received any requests from the Complainants or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement as per paragraph 11(a) of the Rules. 4. Factual Background
The Complainants, wholly owned by the same corporate parent, are Makeup Art Cosmetics Inc. and Estee Lauder Cosmetics Ltd, respectively a U.S. and a Canadian corporation, world leaders in the field of cosmetics operating in more than 65 countries, among which is China, the underlying Respondent’s country.
The Complainants are the owners of more than 600 trademark registrations for MAC, among which:
- Chinese Trademark Registration MAC, No.4548163, applied for on March 18, 2005 and registered on October 7, 2008;
- Community Trademark Registration MAC, No. 4332251, applied for on March 10, 2005 and registered on September 15, 2009;
- United States Trademark Registration MAC, No. 3023827, applied for on March 7, 2005 and registered on December 6, 2005.
The Complainants provided evidence in support of the above-mentioned trademark registrations.
The Complainants also own several domain names, among which are , , , , , , , and .
The disputed domain names (registered on July 18, 2013) and (registered on February 1, 2014) both point to websites looking like genuine websites of authorized Complainants’ resellers, selling counterfeited “MAC” products.
The Complainants provided evidence of the Respondent’s counterfeiting activities on the websites at the disputed domain names.
On January 9, 2014, with reminder on January 30, 2014, the Complainants sent a cease and desist mail to the Respondent, without receiving any answer. 5. Parties’ Contentions A. Complainants
The Complainants state that the disputed domain names and are confusingly similar to their trademark MAC, being a combination of the generic terms “cosmetic”, “me” and “store” and the Complainants’ trademark.
Moreover, the Complainants affirm that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainants to register and/or use the disputed domain names, it is not commonly known by the disputed domain names and it is not making a noncommercial or fair use of the disputed domain names.
The Complainants submit that the Respondent has registered and is using the disputed domain names in bad faith.
The Complainants further assert that their trademark enjoys substantial reputation and the Respondent could not have registered the disputed domain names without knowledge of the Complainants’ trademark rights, especially in light of the Respondent’s very use of the disputed domain names.
Furthermore, the Complainants argue that the Respondent is using the disputed domain names to intentionally confuse consumers and to trade on the Complainants’ rights and reputation.
Finally, a further proof of the Respondent’s bad faith is the failure to respond to the cease and desist mail sent by the Complainants. B. Respondent
The Respondent has made no formal substantive reply to the Complainants’ contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see also Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN,WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al.,WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,WIPO Case No. D2007-0288). 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainants must satisfy in order to succeed:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainants are the owners of the registered trademark MAC and that the disputed domain names and are confusingly similar to the Complainants’ trademark.
Regarding the addition of the generic terms “cosmetics”, “me” and “store”, the Panel notes that it is now well established that the addition of generic terms to a domain name does not necessarily distinguish the domain name from a trademark but rather enhance the confusing nature if descriptive of the Complainants’ business (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713). The addition of the terms “cosmetics”, “me” and “store” do not therefore prevent the disputed domain names from being confusingly similar to the Complainants’ trademark.
It is also well accepted that a Top-Level Domain suffix, in this case “.com”, may be ignored when assessing the confusing similarity between a trademark and a domain name (see, e.g., VAT Holding AG v V,WIPO Case No. D2000-0607).
The Panel finds that the Complainants have therefore met their burden of proving that the disputed domain names are confusingly similar to the Complainants’ trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.
The Complainants in their Complaint and as set out above have established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. They assert that the Respondent is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainants is enough to shift the burden of production to the Respondent to demonstrate that it has a rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names.
Should the products sold in the websites at the disputed domain names be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have a legitimate interest in using a domain name that is confusingly similar to the Complainants’ trademark in circumstances that are likely to give rise to initial interest confusion.
According to the majority view in relation to the issue of resellers as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3:
“A reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use meets certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to corner the market in domain names that reflect the trademark.”
This summary is mainly based on the panel decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
In the present case, the Complainants have provided evidence that some of the products sold on the websites at the disputed domain names are counterfeited products and that the Respondent’s websites at the disputed domain names imitate the websites of an authorized reseller or distributor of the Complainants. Such use does not give rise to any rights or legitimate interests.
Since the Complainants’ evidence is sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of the proof shifts to the Respondent to produce evidence to rebut this showing; the Respondent has failed to rebut or deny this showing.
The Panel therefore finds that the Policy, paragraph 4(a)(ii), has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name; or
(ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted 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] website or location or of a product or service on [the respondent’s] web site or location.”
As regards to the registration in bad faith of the disputed domain names, the registration of the Complainants’ trademark has been proved and the Panel finds that the Respondent knew or must have known the Complainants and/or their trademark rights, especially because the added generic terms “cosmetics”, “me” and “store”, as well as the content of the Respondent’s websites at the disputed domain names, all refer to the Complainants’ business activity; therefore, in this Panel’s opinion, the disputed domain names were registered in bad faith.
As regards to the use in bad faith, the webpages at the disputed domain names all refer to the sale of cosmetics with the Complainants’ famous trademark, and some of these cosmetics have been proved by the Complainants to be counterfeited products.
The Panel finds that the Complainants have presented sufficient evidence to satisfy their burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.
The Panel therefore finds that the Policy, paragraph 4(a)(iii) has been satisfied. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainants.
Edoardo Fano
Sole Panelist
Date: May 29, 2014
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