The Complainant is Elizabeth Arden, Inc. of New York, United States of America (the “USA”), represented by Dorf & Nelson LLP, USA.
The Respondent is Zhao Jiafei of ShuYang, Jiang Su, China. 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 July 30, 2015. On July 31, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2015, 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 August 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2015.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 8, 2015. 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 global beauty products company with an extensive portfolio of fragrances, skin care and cosmetics brands.
The Complainant owns trademark rights for the trademark PREVAGE, registered in the United States Patent and Trademark Office (the “USPTO”). The first registration dates back to the year 2007.
The Panel accessed the website displayed at the disputed domain name on September 11, 2015 and was able to verify that there was a pay-per-click page with several links for fragrance and beauty products.
The disputed domain name was registered by the Respondent on May 5, 2015. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights. Furthermore, the word “skin” directly relates to the Complainant’s activities and business. The addition of a generic Top-Level Domain (“gTLD”) extension such as “.info” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected trademark.
(ii) The Respondent has no rights or legitimate interests in the disputed domain name. Satisfying the burden of proving the Respondent’s lack of rights or legitimate interests in the disputed domain name is quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one. The Respondent has not provided the Complainant with any evidence of its use, or demonstrable preparations, to use the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. The Complainant’s trademark is highly distinctive for beauty products and well known. Therefore, the Respondent is intentionally profiting from the Complainant’s famous trademark. The use of the disputed domain name as a pay-per-click parking page cannot be considered a legitimate noncommercial or fair use of the disputed domain name. The Respondent is not a licensee nor an authorized agent of the Complainant, and was not authorized to use the Complainant’s trademark. The Respondent is not commonly known by the disputed domain name.
(iii) The Respondent registered and is using the disputed domain name in bad faith. The Respondent had registered the disputed domain name with the purpose of selling it to the Complainant. On July 25, 2015 the Complainant received an email offering for sale the disputed domain name. In addition, the Complainant states that the same Respondent offered the Complainant the sale of another domain incorporating the Complainant’s world famous trademark (the domain name in such case was ). The Complainant filed a separate case regarding the latter domain name (FD Management, Inc., Elizabeth Arden, Inc. v. Zhao Jiafei,WIPO Case No. D2015-1119).
Thus, the Complainant concludes that the submission by the Respondent of request to purchase more that one domain name containing the Complainant trademarks is a clear evidence of bad faith.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainants prove each and all of the following three elements in order to be successful in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interest 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 demonstrated to be the owner of registered trademarks for PREVAGE in the USA.
The disputed domain name incorporates the Complainant’s trademark in its entirety with the addition of the generic term “skin”. The term is highly related to the Complainant’s skin care product so it does not differentiate the disputed domain name from the trademark, to the contrary it may enhance confusion with the consumer.
Furthermore, the addition of the gTLD “.info” is not usually an element of distinctiveness taken into consideration when evaluating the identity or confusing similarity of a complainant’s trademark and a domain name, because Top-Level Domains are a required element of every domain name.
Accordingly, the Panel finds that the first element under paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests
A complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy.
However, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Based on the evidence submitted by the Complainant, the Panel finds that there is no evidence that the Respondent has been commonly known by the disputed domain name, has made a legitimate noncommercial use of the disputed domain name or has used the disputed domain name in connection with a bona fide offering of goods or services.
Moreover, the Respondent has failed to respond to the Complaint and has therefore failed to provide any evidence of its rights or legitimate interests in the disputed domain name.
Finally, pursuant to paragraph 10(a) of the Rules, the Panel considers itself competent to independently visit the Internet in order to obtain additional information in a default proceeding (see InfoS, Inc. v. Hari Prakash,WIPO Case No. D2000-0076 and Cortefiel, S.A. v. Javier García Quintas,WIPO Case No. D2000-0141).
On September 21, 2015, the Panel visited the disputed domain name in order to investigate whether any evidence could be found as to the Respondent’s rights or legitimate interests in the disputed domain name. The Panel did not find any such evidence. To the contrary, from the Panel’s own research, it is apparent that the disputed domain name gives access to a pay-per-click website including hyperlinks to cosmetic products.
In view of the above, the Panel finds that the use made by the Respondent of the disputed domain name clearly indicates that the Respondent’s primary intention is to unfairly exploit the goodwill of the Complainant’s trademarks, and that such use cannot be considered to be a “legitimate and noncommercial or fair use of the domain name” or bona fide offering of goods or services in accordance with paragraph 4(a)(ii) of the Policy.
Based on the evidence provided by the Complainant and the Panel’s investigation, the Panel finds that the second element under paragraph 4(a)(ii) of the Policy has been established. C. Registered and Used in Bad Faith
With respect to bad faith registration, the Panel concludes that because Respondent registered a domain name comprising Complainant trademark and the term “skin”, it is obvious that Respondent was aware of the Complainant at the time of registration, since the term “skin” is related to Complainant products.
With respect to bad faith use, the disputed domain name is currently used for a pay-per-click page. Such a use is a classic case of bad faith according to the Policy. The Panel visited the disputed domain name on September 21 and was able to verify that the disputed domain name contained links to pay-per-click ads.
On July 25, 2015, the Complainant received an email offering for sale the disputed domain name. In addition, the Complainant states that the same Respondent offered the Complainant the sale of another domain name incorporating the Complainant’s world famous trademark. The Panel also takes into account that in the case FD Management, Inc., Elizabeth Arden, Inc. v. Zhao Jiafei,WIPO Case No. D2015-1119, the same Respondent of this case, was subject to a claim with respect of the domain name . The panel in that case ruled that the Respondent acted in bad faith in registering such domain name. This is also evidence that the Respondent is targeting the Complainant and registered the disputed domain name in order to sell it to the Complainant.
In addition, the Panel made a search in the UDRP database and was able to verify that “Zhao Jiafei” was the Respondent in ten (10) additional cases where, in all of them, it was held that it registered the domain names at issue in bad faith.
Moreover, the Respondent’s failure to respond to the Complainant’s contentions and as a result to provide any evidence whatsoever of any good faith use of the disputed domain name is an additional indication of bad faith (News Group Newspapers Limited and News Network Limited v. Momm Amed la,WIPO Case No. D2000-1623, Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598, and America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460).
Finally, the Respondent’s postal address in the WhoIs was inaccurate, being that another sign of bad faith.
In light of the above, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Panel finds that the third element under paragraph 4(a)(iii) of the Policy has been established. 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.
Pablo A. Palazzi
Sole Panelist
Date: September 22, 2015
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