The Complainant is Noxell Corporation, United States of America (“United States” or “U.S.”), represented by Studio Barbero SpA, Italy.
The Respondent is Zhouzaoliang, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2020. On September 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 24, 2020, 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 proceedings commenced on September 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2020. The Center appointed Jon Lang as the sole panelist in this matter on November 3, 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 The Complainant is a U.S. company and a subsidiary of Coty Inc., which in 2015 purchased some beauty brands, including MAX FACTOR from Procter & Gamble. The MAX FACTOR line of cosmetics has its origins back in the early 20th century. The Complainant is the owner of several trademark registrations worldwide for MAX FACTOR including European Union registration No. 000273730 (registered on October 6, 1998), U.S. trademark registration No. 1373314 (registered on December 3, 1985) and Chinese trademark registration No. 147016 (registered on May 30, 1981). The MAX FACTOR trademark has been used by the Complainant or its predecessors for more than 100 years in connection with beauty care and cosmetic products. It has been used in China, where the Respondent is prima facie based, since 1980. The MAX FACTOR brand is widely promoted and has a strong presence online through social media. The Complainant has registered numerous domain names worldwide consisting of or comprising the mark MAX FACTOR including, amongst others The Complainant’s principal website dedicated to the MAX FACTOR brand is at “www.maxfactor.com”. The Respondent registered the Domain Name At the time the Complainant became aware of the Domain Name and until recently, it resolved to a website displaying, without any disclaimer of non-affiliation with, or authorization from the Complainant, the Complainant’s trademarks and prima facie official advertising images, and which offered for sale MAX FACTOR products at discounted prices. The Complainant’s representatives wrote a number of cease and desist letters (and reminders) to the Respondent using the varying contact information available to it; the Respondent had changed its contact information on a number of occasions following the Complainant submitting reports asserting the provision of false WhoIs information. Suspension action was taken by the Registrar on each occasion, leading to deactivation of the Respondent’s website. The Respondent’s website was accordingly deactivated and reactivated a number of times but at present, the Domain Name resolves to an inactive web page. 5. Parties’ Contentions A. Complainant The following is a brief summary of the main assertions of the Complainant. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Domain Name is confusingly similar to the MAX FACTOR trademark in which the Complainant has rights. In light of the Complainant’s significant investment in R&D, marketing, sales and distribution channels, as well as the existence of an impressive client-base for its products, MAX FACTOR is a well-known trademark worldwide, including in China. The Domain Name incorporates the entire trademark with the addition of the letters “cn”, a geographic abbreviation for China (the Respondent’s target market). A domain name that wholly incorporates a trademark, in particular one as famous as MAX FACTOR, should be found to be confusingly similar for the purposes of the Policy, despite the fact that it may also contain, after the trademark, a generic or geographic term such as “cn”. In fact, the geographic abbreviation “cn” is apt to make Internet users mistakenly believe that the website might be the Complainant’s official website in China. The generic Top-Level Domain ("gTLD") “.com” is merely instrumental to the use of the Internet, so the Domain Name remains confusingly similar despite its inclusion. The Respondent has no rights or legitimate interests in respect of the Domain Name The Respondent is not a licensee, an authorized agent or in any other way authorized to use the Complainant’s MAX FACTOR trademark. The mere registration of a domain name does not establish rights or legitimate interests. The Respondent is not commonly known by the Domain Name and MAX FACTOR is not its family name. The Domain Name has been directed to a commercial website publishing the Complainant’s trademarks and advertising MAX FACTOR branded products, which were likely counterfeit in light of the discounted prices at which they were offered for sale. Such conduct cannot be considered a legitimate noncommercial or fair use without intent for commercial gain. The lack of any disclaimer of non-affiliation suggests to Internet users that the Respondent’s website is authorized by the Complainant and/or operated by an authorized reseller of the Complainant. There is clearly a likelihood of confusion created by the Respondent’s use of the MAX FACTOR trademark. Whether or not the MAX FACTOR branded product available on the Respondent’s website is counterfeit, there can be no fair use in this case, given the Respondent’s failure to accurately and prominently disclose the absence of a relationship with the trademark owner and to provide any information about the actual entity operating the online site. As set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, “a website must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents”. There cannot be a legitimate interest established where a respondent uses a trademark to create the impression of a non-existent affiliation. Use, which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services. Although the Domain Name is, at present, passively held, this does not constitute legitimate noncommercial or fair use. Moreover, one cannot ignore the Respondent’s previous use. The Respondent did not reply to the cease and desist letters and subsequent reminders sent by the authorised representative of the Complainant. The Domain Name was registered and have being used in bad faith Given the renown of the MAX FACTOR trademark worldwide, including in China where the Respondent is prima facie based, the Respondent was, when registering the Domain Name, undoubtedly aware of the existence of the Complainant’s trademark (and of the fact that the Domain Name was confusingly similar). Indeed, the Respondent pointed the Domain Name to a website where the Complainant’s trademarks featured prominently and where possibly counterfeit products bearing the MAX FACTOR trademark were sold. Even if the products offered for sale on the Respondent’s website were genuine, Internet users could believe that the website is operated by the Complainant or its authorized agents. The Respondent registered the Domain Name with a clear intention of targeting the Complainant’s trademark. The Respondent’s use of the Domain Name demonstrates that its only purpose was to intentionally attempt to attract, for commercial gain, Internet users to its website, creating a likelihood of confusion and to take unfair advantage of the well known character of the MAX FACTOR trademark for the Respondent’s personal profit. Even though the Domain Name presently points to an inactive website, this does not in itself prevent the Panel from finding that it is used in bad faith for the purposes of the Policy; it has been established in a number of prior UDRP cases that the concept of “bad faith use” includes not only positive action but also passive holding if there are other circumstances evidencing bad faith. Moreover, a complainant must always be concerned at the possibility or a respondent re-activating a confusing website in the future. The Respondent has also engaged in a pattern of bad faith registrations targeting well known trademarks. The email of the Respondent until recently associated with other domain names including well known third party trademarks, such as A respondent’s failure to reply to cease and desist letters and the repeated use of inaccurate contact information has also been taken into account in considering bad faith under the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar The Complainant clearly has rights in its MAX FACTOR trademark. Ignoring the gTLD “.com” (as the Panel may do for comparison purposes), the Domain Name incorporates the MAX FACTOR trademark but adds, immediately following it, the letters “cn”. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name to determine whether the trademark is recognizable as such within the domain name. The addition of common, dictionary, descriptive or negative terms are usually regarded as insufficient to prevent confusing similarity. The MAX FACTOR trademark is clearly recognizable within the Domain Name. The addition of the letters “cn”, which represent the abbreviation as well as the country code top-level domain (“ccTLD”) for China, does not prevent a finding of confusing similarity. (See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel finds that the Domain Name is confusingly similar to the MAX FACTOR trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent does indeed lack rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding. A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Here, however, the Respondent is not known by the Domain Name, and given the misleading nature of the website to which the Domain Name once resolved (which displayed the Complainant’s trademark and which advertised possibly counterfeit MAX FACTOR branded product at a discount without any disclaimer of affiliation with the Complainant), it cannot be said that there is legitimate noncommercial use. As to an absence of an intent to mislead (for commercial gain), the Respondent’s choice of Domain Name, the dominant element of which is of course the Complainant’s well known MAX FACTOR trademark, suggests the very opposite. In these circumstances, “use”, such as it is, could not be regarded as “fair” either. A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it seems clear that the Respondent set out to acquire a domain name that would create a misleading impression of association with the Complainant, which has then been used to resolve to a misleading website possibly selling counterfeit goods using the Complainant’s MAX FACTOR trademark. In these circumstances, it would be difficult to accept that such use could amount to a bona fide offering of goods or services for the purposes of the Policy. Indeed, in Drexel University v. David Brouda,WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the Domain Name would not choose such a name unless he was seeking to create an impression of association with the Complainant”. In all the circumstances, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith One way a complainant may demonstrate bad faith registration and use, as envisaged by the non-exhaustive list of circumstances in paragraph 4(b) of the Policy, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website (or other online location) by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website (or other online location) or of products or services on it. It is beyond doubt, given the nature of the website to which the Domain Name once resolved, that the Respondent was aware of the MAX FACTOR trademark at the time of its registration and that it has sought to create a misleading impression of association with the Complainant. It can be fairly readily assumed that the Respondent derived (or had the opportunity to derive) some commercial benefit from the website to which the Domain Name once pointed. The circumstances mirror the example of circumstances illustrative of bad faith registration and use described above (taken from paragraph 4(b)(iv) of the Policy). The Complainant would no doubt succeed in demonstrating bad faith registration and use for the purposes of the Policy on other grounds too, but given the finding above, there is little point in exploring these further. For the sake of completeness however, and given the Domain Name now resolves to an inactive web page, the Panel should deal briefly with the doctrine of passive holding. A passive holding (or non-use) of a domain name can support a finding of bad faith. As section 3.3 of the WIPO Overview 3.0 states, panels must “look at the totality of the circumstances in each case” and “ factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. There is no shortage of reasons to justify a finding of bad faith in this proceeding under the passive holding doctrine, including of course the Respondent’s past use of the Domain Name. The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith. 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 Domain Name Jon Lang
Sole Panellist
Date: November 17, 2020
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