The Complainants are Space NK Limited and Space Brands Limited, both of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Beck Greener, UK.
The Respondent is SpaceNK Apothecary Limited of London, UK. 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 October 22, 2015. On October 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on November 4, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 25, 2015.
On November 27, 2015, the Complainant made an additional submission to the Center.
The Center appointed Jonathan Agmon as the sole panelist in this matter on December 4, 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 first Complainant, Space NK Limited, is an internationally renowned beauty and skin care retailer. The first Complainant operates 62 physical retail stores in the UK and Ireland and 22 retail stores in United States of America. The first Complainant also promotes and sells beauty and skin care products through its various web sites and online stores.
The second Complainant, Space Brands Limited, is a wholly owned subsidiary of the first Complainant, Space NK Limited. The second Complainant is the owner of trademark registrations for trademarks consisting of or incorporating the term "eve lom" around the world. For example: EVE LOM (US Reg. No. 2965709), EVE LOM (UK Reg. No. 2341327), EVE LOM in Cyrillic (Russian Federation Reg. No. 499202), EVE (China Reg. No. 8384509), EVE LOM (Canada Reg. No. TMA757751),EVE LOM (Hong Kong, China Reg. No. 300074240), EVE LOM (Taiwan, Province of China Reg. No. 1103564), EVE LOM (International Reg. No. 818087) and many more.
The first and second Complainants will hereafter be referred to collectively as "the Complainant".
The disputed domain name was registered on September 20, 2014.
The disputed domain name leads Internet users to a website in Mandarin that appears to offer beauty and skin care goods bearing the Complainant's EVE LOM marks for sale. 5. Parties' Contentions A. Complainant
The Complainant argued that the disputed domain name is identical or confusingly similar to the Complainant's trademarks.
The Complainant contended that its trademark registrations provide the Complainant with the exclusive right to use the mark EVE LOM.
The Complainant also argued that it has used the mark EVE LOM in respect of the goods and services registered in Class 3 of the International Nice Classification and that the extensive goodwill and reputation of the mark should provide it the right to prevent others from passing of its business and to prevent any unfair use of the mark.
The Complainant argued that the disputed domain name incorporates in its entirety the mark EVE LOM.
The Complainant further argued that "cn", which is the only additional element incorporated in the second-level domain, refers to China. The Complainant argued that the "cn" element of the disputed domain name is nondistinctive and that the "eve lom" element of the disputed domain name is the dominant and distinctive element.
The Complainant argued that the Respondent's use of the disputed domain name would result in confusion among the public as the disputed domain name would be perceived as indicating, contrary to fact, the Complainant's business.
The Complainant argued that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name.
The Complainant contended that there is no evidence that the Respondent has made 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. The Complainant also argued that the Respondent is not a real entity, which is another indication of its bad faith.
The Complainant also argued that the Respondent is passing itself off as the Complainant and selling counterfeit goods under the Complainant's EVE LOM mark.
The Complainant also argued that the Respondent is not commonly known by and is not making any legitimate noncommercial fair use of the disputed domain name without intent for commercial gain and that it is misleadingly using the disputed domain name to divert consumers or to tarnish the Complainant's trademark.
The Complainant argued that the disputed domain name was registered and is being used in bad faith.
The Complainant argued that the Respondent knowingly gave false contact, ownership and address details to the Registrar and therefore registered the disputed domain name in bad faith. That the Respondent registered the disputed domain name using the same ownership particulars used for the Complainant's domain name and the address of the Complainant's head office in itself indicates bad faith.
The Complainant further argued that the Respondent's use of the disputed domain name is also in bad faith as the Respondent is attempting to pass itself off as the Complainant or as being somehow connected with the Complainant.
The Complainant argued that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration.
The Complainant also argued that the Respondent registered the disputed domain name in order to disrupt the business of the Complainant and to prevent it from reflecting its mark in a corresponding domain name.
The Complainant further argued that the Respondent registered the disputed domain name for the purpose of attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's mark as to the source of the Respondent's website or the products thereon. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
As a preliminary matter the Panel, in its discretion under the Rules, admits the Complainant's November 27, 2015 filing into the record. This filing was procedural in nature and did not address any of the substantive Policy elements. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant, as discussed in the Factual Background, supra, is the owner of trademark registrations for trademarks consisting of or incorporating the term "eve lom" around the world.
The Panel finds the disputed domain name integrates the Complainant's EVE LOM trademark in entirety, as a dominant element.
The lack of a space between the terms "eve" and "lom" and the addition of the letters "cn" do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's trademark.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate a domain name from the relevant registered trademark: "The Panel agrees that with the wholesale incorporation of the YAHOO sign (which is the primary word element in the Complainant's YAHOO! mark), the addition of the descriptive word 'page' does not at all serve to remove the confusing similarity with the Complainant's mark, all the more in the context of webpages or websites". (See Yahoo! Inc. v. Blue Q Ltd., Romain Barissat,WIPO Case No. D2011-0702).
See also Yahoo! Inc. v. Jesper Hansen,WIPO Case No. D2011-2227: "the Disputed Domain Name integrates the Trademark in full to which is added a suffix (i.e., "shows"), which is a generic term. The Panel consequently holds that the addition of this suffix does not distinguish the Disputed Domain Name from the Trademark to avoid a confusing similarity".
The addition of the generic Top-Level Domain ("gTLD") ".com" to the disputed domain name likewise does not avoid a finding of confusing similarity. (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLD ".com" is without legal significance since the use of a gTLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name. 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 in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the EVE LOM trademark, or a variation thereof, in the disputed domain name or on the website under the disputed domain name in the way elaborated under Section 6.C below.
The Respondent has not submitted a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant's prima facie case. Further, the misleading commercial use made of the disputed domain name (i.e., for a website selling what purports to be the Complainant's merchandise without a clear and prominent disclaimer of association with the Complainant) does not suggest to the Panel any rights or legitimate interests in respect of the disputed domain name on the part of the Respondent.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the EVE LOM trademark since at least 1999. It is suggestive of the Respondent's bad faith that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant has generated vast goodwill in the beauty and skin care market. "It is very unlikely that the Respondent would have registered the Domain Names unless he knew either the existence of the trademark SWAROVSKI or that the Domain Names at issue might be of some type of economic advantage" (see Swarovski Aktiengesellschaft v. James Johnson,WIPO Case No. D2012-0080). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.
Further, there is no evidence that the Respondent is a real legal entity. The fact the Respondent used the same address as the Complainant and provided false contact details to the Registrar is also an indication of the Respondent's bad faith registration and use of the disputed domain name.
Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant's allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefrom.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the distinctiveness of the Complainant's trademark and the Respondent's use of the disputed domain name, and the fact the Respondent knowingly gave false contact, ownership and address details, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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 Space Brands Limited.
Jonathan Agmon
Sole Panelist
Date: December 17, 2015
Full & Egal Universal Law Academy