Complainant is Sephora of Boulogne-Billancourt, France, represented by Domainoo, France.
Respondent is Radoslaw Szulc, Sephoravip SP ZOO of Warsaw, Poland. 2. The Domain Name and Registrar
The disputed domain name is registered with Gandi SAS (the “Registrar”). 3. Procedural History
The Complaint in French was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2017. On September 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Further to the Center’s notification that the Registrar confirmed the language of the registration agreement as English, Complainant submitted the English translated Complaint on October 2, 2017.
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 Respondent of the Complaint, and the proceedings commenced on October 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 26, 2017.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on November 2, 2017. 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
Complainant is a legal entity organized under the laws of France that belongs to the Sephora group of companies being a well-known chain of perfume and cosmetic stores in Europe and worldwide.
Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designation “Sephora” including, inter alia:
- Word mark SEPHORA, Institut National de la Propriété Industrielle France (INPI),
Registration No.: 1 678 120, Registration Date: July 10, 1991, Status: Active;
- Word mark SEPHORA, INPI,
Registration No.: 00 3 023 240, Registration Date: April 12, 2000,
Status: Active;
- Word mark SEPHORA, European Union Intellectual Property Office (EUIPO),
Registration No.: 000 788 398, Registration Date: March 20, 1998, Status: Active;
- Word mark SEPHORA, World Intellectual Property Organization (WIPO),
Registration No.: 398 767, Registration Date: May 3, 1973, Status: Active;
- Word mark SEPHORA, WIPO,
Registration No.: 749 589, Registration Date: October 10, 2000; Status: Active.
Moreover, the Sephora group of companies, inter alia, owns the domain name which resolves to the Sephora group of companies’ official website at “www.” in order to promote Complainant’s business of selling perfume and cosmetic products.
Respondent with domicile in Paris, France (according to a WhoIs record for the disputed domain name provided by Complainant of July 18, 2017), and later in Warsaw, Poland (according to the Registar Verification for the disputed domain name of September 19, 2017), registered the disputed domain name on January 13, 2015. As of the time of the rendering of this Decision, the disputed domain name resolves to a website at “www.” which offers perfume and cosmetic products for online sale under the heading “Sephora Vip”.
Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends that it was founded already in 1969 and that its products and services are sold all over the world through more than 1,300 shops and corners in 33 countries.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s SEPHORA trademark as it reproduces the latter identically and in its entirety with the sole addition of the generic term “vip”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests with respect to the disputed domain name since (1) Respondent has no intellectual property rights in the term SEPHORA and, in the absence of any business relationship, has never received any license or authorization by Complainant to use the same, either as a trademark or as a domain name, (2) the disputed domain name is associated to a website that looks quite similar to Complainant’s official website and that is used for commercial purposes, namely the supply of perfumes and cosmetic products. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) due to a UDRP proceeding concerning the domain name of 20141 , involving the same Respondent, Respondent was perfectly aware of Complainant’s rights in the term “Sephora”, (2) the suspension of Respondent’s website at the domain name as a consequence of the afore mentioned UDRP proceeding was reactivated via the disputed domain name and (3) the insertion of a disclaimer “S is not associated with S.” does not alter the registration and use of the disputed domain name in bad faith into the contrary. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That 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.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the SEPHORA trademark in which Complainant has rights.
The disputed domain name incorporates the SEPHORA trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of a generic or descriptive term or geographic wording to a trademark in a domain name is insufficient, in and of itself, to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the generic term “vip” (being the acronym for “very important person”) does not dispel the confusing similarity arising from the incorporation of Complainant’s SEPHORA trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant’s SEPHORA trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent is commonly known by the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “Sephora”. Finally, Respondent obviously has neither used the disputed domain name for a bona fide offering of products or services nor for a legitimate noncommercial or fair purpose. To the contrary, Respondent apparently uses the disputed domain name to resolve to a website at “www.” which offers perfume and cosmetic products for online sale, thus is engaged in the same business as is Complainant and - in addition - under a website that is quite similar to Complainant’s own online presence.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests with respect to the disputed domain name. Having done so, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.1). Given that Respondent defaulted, Respondent has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
As evidenced by Sephora v. Whois Data Protection Sp. z o.o. / Paul Tchernitsky of Sephoravip / Radoslaw Szulc of Sephoravip, supra, concerning the domain name that was held, inter alia, by Respondent, too, the latter apparently chose to register the disputed domain name in the full knowledge of Complainant’s rights in the SEPHORA trademark and in order to reactivate a website that it had formerly run under the domain name and which as well competed with Complainant both in terms of the website’s look and feel as well as from the nature of the business run thereunder. The Panel, therefore, concludes that using the disputed domain name, which is confusingly similar to Complainant’s SEPHORA trademark, to resolve to a website at “www.” that both mimics Complainant’s official website as well as offers identical services as does Complainant, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s SEPHORA trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In this context, the Panel has well noted that Respondent’s website includes a (very small) disclaimer “S is not associated with S.” However, as the overall circumstances of the case at hand point to Respondent’s bad faith, the mere existence of such disclaimer cannot cure such bad faith behaviour, particularly not in light of the earlier UDRP decision between the parties to this case (see also WIPO Overview 3.0, section 3.7).
Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 Complainant.
Stephanie G. Hartung
Sole Panelist
Date: November 14, 2017
1 Sephora v. Whois Data Protection Sp. z o.o. / Paul Tchernitsky of Sephoravip / Radoslaw Szulc of Sephoravip,WIPO Case No. D2014-1283
Full & Egal Universal Law Academy