Complainant is Deciem Beauty Group Inc., Canada, represented by Gowlings WLG (Canada) LLP, Canada.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Malik Ali, Pakistan. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2020 regarding three domain names (including the Domain Name). On May 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 5, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 24, 2020, requesting the addition of another domain name to the dispute. 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2020. The Complainant and the registrant for three of the domain names reached a settlement agreement, and the Center sent a notice of settlement agreement on September 23, 2020. The proceeding continued regarding the Domain Name The Center appointed Marina Perraki as the sole panelist in this matter on October 8, 2020. 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 leading global skin care and beauty company with sales in numerous countries around the world. Since its launch in 2013, it has more than 50 products sold in markets internationally. Complainant’s team is specialized in materials chemistry and biochemistry and has brought pioneering innovation in skincare through its brands, including THE ORDINARY. Sales of THE ORDINARY are in excess of USD 100 million dollars globally. Complainant operates a website at “www.theordinary.com”. Complainant owns numerous trademark registrations worldwide that contain, or are comprised of, THE ORDINARY, including: - European Union Trademark registration No. 015761182 THE ORDINARY (word), filed on August 19, 2016 and registered on December 8, 2016, for goods in class 3; - European Union Trademark registration No. 016891781 THE ORDINARY (word), filed on June 19, 2017 and registered on October 16, 2017, for services in classes 35 and 44. Per Complaint, THE ORDINARY trademarks enjoy widespread recognition and have generated significant goodwill. The Domain Name was registered on April 1, 2020 and lead at the time of filing of the Complaint to a website engaged in the wholesale misappropriation of Complainant’s intellectual property (the Website). The Website provided that it is “operated by The Ordinary”, while also featuring Complainant’s trademarks. Respondent also identified its trade name as “Ordinary Care”. The Website used the email address […]@yahoo.com. The Website included Complainant’s copyrighted images and text, reproducing text from Complainant’s website as follows: “Who Are We? The Ordinary is an evolving collection of treatments offering familiar, effective clinical technologies positioned to raise pricing and communication integrity in skincare. The brand was created to celebrate integrity in its most humble and true form. Its offering is pioneering, not in the familiar technologies it uses, but in its honesty and integrity. The Ordinary is born to disallow commodity to be disguised as ingenuity. The Ordinary is Clinical formulations with integrity." Per Complaint, Complainant has confirmed that Respondent has been shipping counterfeit products to consumers. Currently, the Domain Name leads to an inactive website. 5. Parties’ Contentions A. Complainant Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Domain Name incorporates Complainant’s trademark THE ORDINARY almost in its entirety, excluding only the article “the”. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525). The addition of the word “care” does not avoid a finding of confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). In addition, the Panel notes that the content of the website at the Domain Name supports a finding of confusing similarity, particularly as the website content is trading off Complainant’s reputation (WIPO Overview 3.0, section 1.7). The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,WIPO Case No. D2002-0122). The Panel finds that the Domain Name is confusingly similar to THE ORDINARY mark of Complainant. Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel concludes that Respondent lack rights or legitimate interests in respect of the Domain Name. Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name. Respondent did not demonstrate any bona fide use of the Domain Name prior to the notice of the dispute. Furthermore, as Complainant demonstrated, the Domain Name resolved at the time of filing of the Complaint to the website containing content that suggested falsely that the website was that of Complainant or of an affiliated entity or of an authorized partner of Complainant. Per Complaint, Respondent is not an affiliated entity or an authorised distributor or partner of Complainant and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks on the website and the use of the Domain Name by Respondent. A distributor or reseller can be making a bona fide offering of goods and thus have a legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.8.1: (i) respondent must actually be offering the goods at issue; (ii) respondent must use the site to sell only the trademarked goods; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) respondent must not try to “corner the market” in domain names that reflect the trademark. The Panel notes Complainant’s confirmation that Respondent has been shipping counterfeit products to consumers, but even if the case was to be analyzed under the perspective of a distributor or reseller, the Panel finds that these requirements are not cumulatively fulfilled in the present case. The Domain Name, and its use, falsely suggests that the website is an official site of Complainant or of an entity affiliated to or endorsed by Complainant. The website extensively reproduced, without authorization by Complainant, Complainant’s THE ORDINARY trademarks, copyrighted images and text, without any disclaimer of association (or lack thereof) with Complainant. Website provided that it is “operated by The Ordinary”, while featuring Complainant’s THE ORDINARY trademarks and copyrighted works. Respondent also identified its trade name as “Ordinary Care”. Furthermore, the website featured the stylized O Design trademark as a banner. The Website used the email addresses [...]@yahoo.com. The linguistic construction of the Domain Name, along with its use, suggested it is operated by Complainant. Furthermore, the use of a domain name which intentionally trades on the fame of another and suggested affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi/“Madonna.com,WIPO Case No. D2000-0847). Lastly, per Complaint, Complainant has confirmed that Respondent has been shipping counterfeit products to consumers (WIPO Overview 3.0, section 2.13.1). The Panel finds that these circumstances do not confer upon Respondents any rights or legitimate interests in respect of the Domain Names. Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that 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 Respondent has engaged in a pattern of such conduct; or (iii) that 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the THE ORDINARY mark had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name. Furthermore, the Domain Name incorporates almost in whole Complainant’s’ mark plus an additional word related to Complainant’s products, therefore creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Name. The website’s content, eminently displaying Complainant’s trademarks and copyrighted text and images, further supports knowledge of Complainant and its field of activity. As Complainant demonstrated, the website’s content was targeting Complainant’s trademark, as it prominently displayed Complainant’s THE ORDINARY trademark, copyrighted text and images. This further supports a finding of registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen,WIPO Case No. D2018-0625; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO,WIPO Case No. D2017-1367). As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was used to resolve to the website, which prominently displayed Complainant’s registered trademarks, copyrighted text and images, thereby giving the false impression that it was operated by Complainant or a company affiliated to Complainant or an authorised reseller or partner of Complainant. The Domain Name operated therefore by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website it resolved to. This supports the finding of bad faith use (WIPO Overview 3.0, section 3.1.4). Lastly, per Complaint, Complainant has confirmed that Respondent has been shipping counterfeit products to consumers. Under these circumstances and on this record, the Panel finds that Respondent registered and used the Domain Name in bad faith. Complainant has established Policy, 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 Marina Perraki
Sole Panelist
Date: October 22, 2020
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