The Complainant is Deciem Beauty Group Inc., Canada, represented by Gowling WLG (Canada) LLP, Canada.
The Respondent is Domain Admin, Privacy Protect, LLC, United States of America / Tran Phu Nghia, Viet Nam. 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 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name, and a reminder on February 16, 2021. On February 18, 2021, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the 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 26, 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 26, 2021. On February 26, 2021, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on February 26, 2021. The Respondent did not comment on the language of the proceeding. 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 in English and in Vietnamese, and the proceedings commenced on March 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2021. The Center appointed Nicholas Smith as the sole panelist in this matter on April 12, 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 Canadian company that offers skin care and beauty products. Since its launch in 2013, the Complainant has sold more than 50 different products in over 100 countries under a number of brands, including THE ORDINARY. Over CAD500 million worth of beauty products have been sold under THE ORDINARY brand since its launch. The Complainant maintains a website at “www.theordinary.com” through which it promotes its treatments. The Complainant holds trademark registrations for the word mark THE ORDINARY (the “THE ORDINARY Mark”) in over 50 jurisdictions including a United States trademark for retail store and beauty consultation services with a registration date of November 19, 2019 (registration no. 5911550). The Domain Name was registered on December 4, 2020. The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a website (the “Respondent’s Website”) which in (mostly) English and (some) Vietnamese purported to offer the Complainant’s branded THE ORDINARY products and similar products offered by the Complainant’s competitors. The Respondent’s Website reproduces the stylized wording of “The Ordinary” used on the Complainant’s website and reproduces copyrighted images owned by the Complainant. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: (i) that the Domain Name is identical or confusingly similar to the Complainant’s THE ORDINARY Mark; (ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. The Complainant is the owner of the THE ORDINARY Mark, having registered the THE ORDINARY Mark in the United States and other jurisdictions. The Domain Name is confusingly similar to the THE ORDINARY Mark as it reproduces the word mark THE ORDINARY in its entirety and adds the abbreviation “auth”. There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve to a website that offers products under the Complainant’s THE ORDINARY Mark without permission or consent from the Complainant as well as products from the Complainant’s competitors, which does not amount to a bona fide offering of goods and services. The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website that offers competing goods, the Respondent is using the Domain Name to divert Internet users searching for the Complainant to the Respondent’s Website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding In the present case, the language of the registration agreement for the Domain Name is Vietnamese. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant, upon receiving a notification that the language of the registration agreement for the Domain Name was Vietnamese from the Center, submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules. The WIPO Overview 3.0, paragraph 4.5.1, in considering how the (working) language of a UDRP proceeding is determined, states: “Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement. The credibility of any submissions by the parties and in particular those of the respondent (or lack of reaction after having been given a fair chance to comment) are particularly relevant. Where it appears the parties reasonably understand the nature of the proceedings, panels have also determined the language of the proceeding/decision taking account of the panel’s ability to understand the language of both the complaint and the response such that each party may submit pleadings in a language with which it is familiar.” In adopting a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs; see Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432. The Panel finds that in the circumstances of this case, paragraph 11 of the Rules is best served by allowing the proceedings to be conducted in English. The Panel has noted that the content of the Respondent’s Website is English and the Domain Name itself contains two English words. Given these facts it would appear that the Respondent is familiar with the English language and it would be appropriate to continue these proceedings in that language. Furthermore the Respondent has been given a fair opportunity to object to the Complainant’s choice of English as the language of the proceeding, but has not done so, nor has it participated in the proceeding generally. 6.2. Substantive Issues A. Identical or Confusingly Similar To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the THE ORDINARY Mark, having a registration for the THE ORDINARY Mark as a trademark in the United States and other jurisdictions. The Domain Name incorporates the THE ORDINARY Mark in its entirety with the addition of the abbreviation “auth”. The addition of an abbreviation (or any generic) term to a wholly incorporated complainant’s mark does not prevent the confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056. The Panel finds that the Domain Name is confusingly similar to the Complainant’s THE ORDINARY Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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.” The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the THE ORDINARY Mark or a mark similar to the THE ORDINARY Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use. The Respondent has used the Domain Name to operate a website that purports to offer beauty products under the Complainant’s THE ORDINARY Mark. Given the lack of any connection between the Complainant and the Respondent and the manner in which the Respondent’s Website impersonates the Complainant it is highly likely that the products sold by the Respondent are not genuine Complainant products. If this is the case the Respondent’s use of the Domain Name does not grant it rights or legitimate interests since it is using the Complainant’s THE ORDINARY Mark for a site selling counterfeit products. Even if the Respondent is offering genuine THE ORDINARY products from the Respondent’s Website, such use does not automatically grant it rights and legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.8 summarizes the consensus views of UDRP panels in assessing claims of nominative (fair) use by resellers or distributors in the following manner: “… Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark. The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.” In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather the Respondent, through its use of the Domain Name and the Complainant’s copyrighted material, is actively impersonating the Complainant online. Furthermore the Respondent is using the Respondent’s Website to sell goods that are directly in competition with the Complainant’s products. Even in the event that the Respondent is reselling genuine THE ORDINARY products, its use of the Domain Name for the Respondent’s Website does not grant it rights or legitimate interests in the Domain Name. In addition, UDRP panels have found that domain names similar to a complainant’s trademark carry a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0). The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)). The Panel finds that the Respondent was aware of the Complainant and its reputation in the THE ORDINARY Mark at the time the Domain Name was registered. The Respondent’s Website purported to offer goods in direct competition with the Complainant and impersonated the Complainant, including copying copyright photos of the Complainant’s products from the Complainant’s website. The registration of the Domain Name in awareness of the THE ORDINARY Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith. The Respondent has used the Domain Name, wholly incorporating the THE ORDINARY Mark, to offer beauty products, be they genuine or otherwise, in competition with the Complainant under the Complainant’s THE ORDINARY Mark. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s THE ORDINARY Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website (Policy, paragraph 4(b)(iv)). Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith 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 Domain Name Nicholas Smith
Sole Panelist
Date: April 14, 2021
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