The Complainant is Deciem Beauty Group Inc., Canada, represented by Gowling WLG (Canada) LLP, Canada.
The Respondent is 李策平 (Li Ce Ping), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English 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 disputed domain name. On February 18, 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 19, 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 in English on February 26, 2021. On February 19, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On February 26, 2021, the Complainant submitted a request that English be the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on March 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2021. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on April 1, 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 skin care and beauty company headquartered in Canada. Since its launch in 2013, the Complainant has more than 50 products sold in markets around the world. The Complainant claims it has brought pioneering innovation in skincare through its brands, THE ORDINARY, HYLAMIDE and NIOD etc.. The Complainant’s sales of DECIEM products have been in excess of USD 100 million dollars globally. The Complainant owns a large international portfolio of trademarks for DECIEM, including, for example, Canadian trademark registration number TMA884741, registered on August 26, 2014 and Chinese trademark registration number 17096399, registered on October 28, 2016. The Complainant also operates an official website at “www.deciem.com”. The disputed domain name was created on December 22, 2020. The Complainant submits evidence that the disputed domain name directed to a website promoting the sale of the Complainant’s THE ORDINARY products, which could further direct to the Respondent’s Amazon account selling beauty products. On the date of this decision, the disputed domain name still leads to this website, which could further lead to another online store rather than the original Amazon account. 5. Parties’ Contentions A. Complainant The Complainant essentially contends that the disputed domain name is identical or confusingly similar to its trademarks for DECIEM, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith. The Complainant claims that its trademarks are distinctive and used intensively. The Complainant particularly submits that there are no justifications for the use of its trademarks in the disputed domain name, and contends that the fact that the Respondent has been using the disputed domain name to promote the identical or similar products with the Complainant’s goods is proof that he has registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, 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 language of the Registration Agreement is Chinese, and the Complaint is filed in English. On February 19, 2021, the Center notified the Parties that the language of the Registration Agreement is Chinese, and invited the Parties to comment on the language of the proceeding. The Complainant confirmed its request that the language of the proceeding be English on February 26, 2021. The Respondent did not make any comments on the language of the proceeding and did not submit any arguments on the merits. The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English; the fact that the disputed domain name consists of English words only; the fact that all communications from the Center have been sent in English and Chinese to the Parties, and the Respondent did not comment on the language of the proceeding and did not submit arguments on the merits (while he had the right to do so in Chinese or English); the fact that the website resolving from the disputed domain name displays English contents, which proves the Respondent has good command of English; and the fact that Chinese as the language of the proceeding could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English. 6.2. Discussion and Findings on the Merits The Policy requires the Complainant to prove three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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 has been registered and is being used in bad faith. Based on the evidence and arguments submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar The Panel finds that the Complainant has shown that it has valid rights in the mark DECIEM based on its extensive use and registration of the same as a trademark globally. As to the identity and confusing similarity, the disputed domain name consists of the Complainant’s registered trademark DECIEM in its entirety. The applicable generic Top-Level Domain (“gTLD”) “.shop” in this case is viewed as a standard registration requirement, and may as such be disregarded by the Panel. See in this regard the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.11.1. Moreover, the WIPO Overview 3.0, section 1.7, states: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). The Panel concludes that the disputed domain name contains the entirety of the Complainant’s registered trademark DECIEM, as its only distinctive feature. Accordingly, the Panel rules that the disputed domain name is identical to the Complainant’s registered trademark DECIEM. The Complainant has satisfied the requirements of the first element under the Policy. B. Rights or Legitimate Interests On the basis of the evidence and arguments submitted, the Panel holds that the Complainant has made out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial or fair use of the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply. Furthermore, the Panel notes that the nature of the disputed domain name, being identical to the Complainant’s trademarks, carries a high risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1), and that the Respondent is not commonly known by the disputed domain name. On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy. C. Registered and Used in Bad Faith The Panel holds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s trademarks, by using such trademarks to mislead and divert consumers to the disputed domain name. Given the distinctiveness and prior registration of the Complainant’s trademarks, and composition of the disputed domain name related to the Complainant’s products and services, the Panel holds that the registration of the disputed domain name, clearly targeting the Complainant’s trademarks, was obtained in bad faith. Furthermore, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owns the registered trademarks for DECIEM and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name. As to use of the disputed domain name in bad faith, the disputed domain name links to a website promoting and selling the Complainant’s THE ORDINARY products, which could further direct to another online platform selling beauty products. Further, the Respondent’s website has also misappropriated the Complainant’s copyrighted works showing on its own website. That indicates the Respondent’s intention to use the Complainant’s trademarks and reputation to attract Internet users for the Respondent’s commercial gain. Moreover, the Respondent’s products are identical or confusingly similar to the Complainant’s relevant goods. It further shows the Respondent knows the Complainant, its products, services and its trademarks, and the Respondent intends to mislead consumers that the Respondent is somehow connected, associated with, authorized or endorsed by the Complainant, which is not the case. The Panel has reviewed all elements of this case, and in particular: the identity or confusing similarity of the disputed domain name to the Complainant’s trademarks; the distinctiveness and reputation of the Complainant’s trademarks; the fact that the Respondent linked the disputed domain name to a website promoting and selling the Complainant’s products for commercial gain; the fact that by misappropriating the Complainant’s works, the Respondent infringed upon the Complainant’s copyright; and the fact that the Respondent directly competes with the Complainant by offering the above identical or similar goods. On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent is using the disputed domain name in bad faith. Finally, the Respondent failed to provide any response or evidence to establish her good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 disputed domain name Deanna Wong Wai Man
Sole Panelist
Date: April 15, 2021
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