The Complainant is Deciem Beauty Group Inc., Canada, represented by Gowling WLG (Canada) LLP, Canada.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Hope Lee, 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 February 11, 2021. On February 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 16, 2021, the Registrar transmitted by email to the Center its verification response 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 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 on March 3, 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 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2021. The Center appointed Nicholas Smith as the sole panelist in this matter on April 13, 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 and DECIEM. Over CAD100 million worth of beauty products have been sold by the Complainant since its launch. The Complainant maintains websites at “www.theordinary.com” and “www.deciem.com” through which it promotes its products and 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 priority date of June 15, 2017 (registration no. 5911550). The Complainant also holds trademark registrations for the word mark DECIEM (the “DECIEM Mark”) in over 50 jurisdictions including a United States trademark for brand management services with a registration date of June 9, 2015 (registration no. 4750284). The Domain Name was registered on March 16, 2020. Prior to the commencement of the proceedings the Domain Name redirected to a website (the “Respondent’s Website”) that offered sponsored listings (often referred to as pay-per-click advertisements) that provided links to businesses selling beauty treatments in direct competition with 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 and DECIEM Marks; (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 and DECIEM Marks, having registered the THE ORDINARY and DECIEM Marks in the United States and other jurisdictions. The Domain Name is confusingly similar to the THE ORDINARY and DECIEM Marks as it reproduces the both the THE ORDINARY and DECIEM Marks in their entirety. 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 Domain Name resolves to a page with advertising links to websites selling beauty products offered by the Complainant’s competitors, which does not provide the Respondent with rights or legitimate interests. The Domain Name was registered and is being used in bad faith. Given the reputation of the THE ORDINARY and DECIEM Marks, the registration of the Domain Name which incorporates both marks can only be taken as an attempt by the Respondent to gain an unfair benefit from the Complainant’s reputation. By using the Domain Name to resolve to a website that offers links to 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 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 and DECIEM Marks, having a registration for the THE ORDINARY and DECIEM Marks as trademarks in the United States and other jurisdictions. The Domain Name wholly incorporates both THE ORDINARY and DECIEM Marks with no addition other than the gTLD “.com”. The Panel finds that the Domain Name is confusingly similar to both the Complainant’s THE ORDINARY and DECIEM Marks. 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 or DECIEM Marks or a mark similar to the THE ORDINARY or DECIEM Marks. 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 or a bona fide offering of goods or services; the use of the Domain Name for what appears to be a page with pay-per-click links to sites offering beauty products in direct competition with the Complainant’s beauty products (sold under THE ORDINARY and DECIEM Marks) does not amount to use for a bona fide offering of goods or services.. 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 trademark 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 trademark 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 and DECIEM Marks at the time the Domain Name was registered. It would be implausible for an entity to register a domain name comprising of both the Complainant’s THE ORDINARY and DECIEM Marks (the latter being a coined word), with no awareness of the Complainant. This is reinforced by the fact that the Respondent’s Website contains links to entities that offer goods in direct competition with the Complainant. The registration of the Domain Name in awareness of the THE ORDINARY and DECIEM Marks and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith. The Respondent’s Website offers what appears to be pay-per-click links to businesses selling beauty treatment products in direct competition with the Complainant. In these circumstances where the Respondent has offered no plausible explanation for the registration of the Domain Name the Panel finds that the Respondent has used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the THE ORDINARY and DECIEM Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. As such the Panel finds that the Domain Name is being used in bad faith. 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 15, 2021
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