The Complainant is Deciem Beauty Group Inc., Canada, represented by Gowling WLG (Canada) LLP, Canada.
The Respondent is Abderrahmane Rarhib, Aswakishop, Morocco. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2021. On February 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 11, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 12, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 24, 2021. The Center verified that the Complaint together with the amendment to 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 March 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2021. The Response was filed with the Center on March 23, 2021. The Center appointed Lynda M. Braun as the sole panelist in this matter on March 30, 2021. 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 skin care and beauty company, said to be recognized as an innovator in its industry. The Complainant has enjoyed considerable success in a short period of time. Since its launch in 2013, the Complainant has sold more than 50 products in markets worldwide. Last year, the Complainant’s sales of its products totaled in excess of USD 100 million globally. The Complainant is the owner of over 200 trademark registrations for THE ORDINARY, either standing alone or incorporating the trademark, that it uses in connection with its goods and services across many jurisdictions throughout the world, including in the United States, and Morocco, where the Respondent purportedly resides. The following is a mere sampling of the Complainant’s portfolio of trademarks: The Disputed Domain Name was registered on December 16, 2020, and resolved to a website written in Arabic at “www.aswaqmall.com”, which is operated by the Respondent as an online retail store that offers a variety of products. As of the writing of this Decision, however, the Disputed Domain Name no longer resolves to that website and instead redirects to a parking page which states: “Sorry...ordinary.website could not be found. It may be unavailable or may not exist.” The Complainant sent a cease-and-desist letter to the Respondent on December 17, 2020, explaining that the Respondent’s use of the Disputed Domain Name constituted trademark infringement and demanding that the Respondent immediately transfer the Disputed Domain Name to the Complainant. The Complainant never received a response to the cease-and-desist letter from the Respondent. The Respondent submitted an informal response on March 23, 2021, in which he denied having done anything wrong when he purchased the Disputed Domain Name. The Respondent informed the Complainant’s attorney that he was selling the Disputed Domain Name for USD 659,233.00. While the offer to sell did not occur until after the deadline for submissions in these proceedings had closed, the Panel has the discretion to accept or reject such additional submissions. Here, the Panel has decided to accept the new information submitted by the Complainant as it is relevant and was unavailable at the time the Complainant submitted its Complaint. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and - the Disputed Domain Name was registered and is being used in bad faith. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent submitted an informal response in which the Respondent contends that he acquired the Disputed Domain Name legally, that he intends to sell the Disputed Domain Name and that he did not believe that such a sale was inappropriate, that there is no evidence that the Respondent disrupted the Complainant’s business in using the Disputed Domain Name, that there is no evidence that the Respondent used the Disputed Domain Name for commercial gain, and that the goods on the Respondent’s website to which the Disputed Domain Name resolved were not competitive with the goods on the Complainant’s website. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding that: (i) the Disputed Domain Name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to THE ORDINARY Mark. It is uncontroverted that the Complainant has established rights in THE ORDINARY Mark based on its several years of use as well as its numerous registered trademarks for THE ORDINARY Mark in multiple jurisdictions worldwide. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in THE ORDINARY Mark. The Disputed Domain Name consists of THE ORDINARY Mark in its entirety followed by the generic Top-Level Domain (“gTLD”) “.website”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy. When a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Further, the addition of a gTLD such as “.website” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s THE ORDINARY Mark. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use THE ORDINARY Mark. Nor does the Complainant have any type of business relationship with the Respondent. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Moreover, based on the use made of the Disputed Domain Name to resolve to a website operated by the Respondent and used as an online retail store for customers to purchase a variety of goods, the Panel finds that the Respondent was not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the Respondent used the Disputed Domain Name for commercial gain. Finally, the composition of the Disputed Domain Name, comprising the entirety of THE ORDINARY Mark, carries a high risk of implied affiliation and cannot constitute fair use here, as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy. First, the use of a domain name to intentionally attempt to attract Internet users to a respondent’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s website demonstrates registration and use in bad faith. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s THE ORDINARY Mark and to drive Internet traffic seeking the Complainant’s services to the website to which the Disputed Domain Name resolves for commercial gain. See paragraph 4(b)(iv) of the Policy. By reproducing the Complainant’s registered trademark in its entirety in the Disputed Domain Name, it suggests that the Complainant is the source of the website, which it is not. Second, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Third, the Respondent’s offer to sell the Disputed Domain Name for valuable consideration far in excess of the documented out-of-pocket costs directly related to the Disputed Domain Name is also evidence of the Respondent’s bad faith registration and use under paragraph 4(b) of the Policy. Finally, the Respondent did not respond to the cease-and-desist letter sent by the Complainant. Previous UDRP panels have held that failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of a domain name. See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330. Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun
THE ORDINARY, United States Trademark Registration No. 5,203,537, registered on May 16, 2017, in international class 3;
THE ORDINARY, United States Trademark Registration No. 5,911,550, registered on November 19, 2019, in international classes 35 and 44; and
THE ORDINARY, Moroccan Trademark Registration No. E192482, registered on March 13, 2018, in international classes 3 and 35 (hereinafter collectively referred to as “THE ORDINARY Mark”).
Sole Panelist
Date: April 13, 2021
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