The Complainants are Creative Nail Design, Inc. United States of America (“United States” or “US”) (the “first Complainant) and BrandCo CND 2020 LLC, United States, represented by CMS Cameron McKenna Nabarro Olswang LLP, United Kingdom (“UK”) (the “second Complainant”).
The Respondent is Pavel E Kostyanitsa, the Russian Federation.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2021. On August 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 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 August 24, 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 amended Complaint on August 31, 2021.
The Center verified that the Complaint together with the amended 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 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2021.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on November 24, 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 BackgroundThe second Complainant owns 430 trademark applications and registrations around the world for the marks SHELLAC and CND SHELLAC, and marks incorporating these word elements. These trademarks include US Trademark registration No. 4340079, registered on May 21, 2013; EU Trademark registration No. 017929018, registered on November 9, 2018; and Russian Federation trademark registration No. 2011-715-540 for the word mark CND SHELLAC, registered for a number of goods including cosmetics and nail care preparations on May 26, 2013. They also include US Trademark registration No. 3862232, registered on October 12, 2010; UK trade mark registration No. 3070075, registered on August 27, 2014; and Russian Federation trademark registration No. 2011715539, registered on March 19, 2012, all for the word mark SHELLAC and registered for similar goods and services. The second Complainant licenses the first Complainant’s use of the said trademarks.
The first Complainant has engaged in a substantial amount of advertising and promotion of its Shellac and CND Shellac branded products around the world. Shellac branded nail varnish products were introduced in about 2010.
The disputed domain name was registered on November 6, 2020.
The disputed domain name resolves to a website that masquerades as an official website of the Complainants and on which unauthorized parallel imported of the Complainants or counterfeited goods are offered for sale.
5. Parties’ Contentions A. ComplainantThe Complainants say that the disputed domain name is, pursuant to paragraph 4(a)(i) of the Policy, identical to a number of the second Complainant’s trademarks, including but not limited to the second Complainant’s registered US trademark SHELLAC (Trademark No. 3862232), registered UK trademark SHELLAC (trade mark No. 3070075), and registered Russian Federation trademark SHELLAC (trademark No. 2011715539), registered for (amongst other goods) nail care preparations; nail enamel; nail polish; nail varnish and cleaning, polishing…preparations; cosmetics; ultraviolet ray lamps and ‘polishing preparations, cosmetics.
The Complainants contend that the Respondent had, at a minimum, constructive knowledge of the Complainants’ longstanding rights because the disputed domain name was registered on November 6, 2020 which is over 10 years after the first Complainant first launched its SHELLAC-branded line of products and began using the relevant trademarks. The fact that the Respondent simply copied the Complainants’ trademarks and the first Complainant’s various corporate logos and pasted these into the website to which the disputed domain name resolves, is, according to the Complainants, evidence that the Respondent had knowledge of the Complainants’ prior rights. The Complainants point out that numerous UDRP panels have held that where a complainant has valid trademark rights in a trademark comprising the disputed domain name, and where such rights exist in the home country of the registrant, the principles of constructive notice in that jurisdiction may fairly be applied, and a respondent may be presumed to have notice of the trademark.
The Complainants point out that the Respondent has not attempted to demonstrate, and the Complainants have not been able to determine: (i) that before notice was given to the Respondent of this dispute, the Respondent used the disputed domain name in connection with a bona fide offering of goods or services. The Complainants say that the Respondent has not used the disputed domain name in connection with a bona fide offering, basing itself on the assumption that unauthorized products infringing of the Complainants’ intellectual property rights have been, and currently are being, sold on the relevant website.
The Complainants say that they are not aware that the Respondent has any entitlement or right to register company names incorporating the Complainants’ trademarks (nor are the Complainants aware of the Respondents having done so). The Complainants contend that the use of the Complainants’ trademarks on the relevant website is for the sole purpose of the Respondent masquerading as the Complainants and/or to give the impression that the Respondent provide genuine products of the first Complainant, both of which are aimed at hijacking or otherwise free riding on the Complainants’ substantial reputation, for personal gain.
The Complainants also suspect counterfeiting activities, which means that the Respondent has been making an illegitimate and unfair commercial use of the disputed domain name, with the sole intention of securing commercial gain by misleading consumers into believing that the relevant website is operated by or otherwise affiliated with the Complainants, thus diverting sales away from them.
The Complainants assert that the trademark SHELLAC is an original, coined term. Given its highly distinctive and fanciful nature and given that the content of the relevant website is almost entirely copied from the legitimate websites and other pages operated by the Complainants, it is virtually inconceivable that the Respondents chose to register the disputed domain name without being aware of the existence of the Complainants’ SHELLAC trademark and other prior rights. The Complainants contend that the Respondents deliberately chose the Complainants’ trademark to masquerade as the Complainants and/or to give the impression of providing the Complainants’ genuine products rather than the unauthorized parallel import SHELLAC-branded products that the Respondent is suspected to be selling from the relevant website.
Finally, the Complainants reiterate that the Respondent is suspected to have sold, and be currently selling, unauthorized parallel imported SHELLAC-branded products on the website to which the disputed domain name resolves and this in itself constitutes bad faith.
B. RespondentThe Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Panel holds that the disputed domain name is identical to the SHELLAC trademark of the Complainants. For the purpose of comparison the “.store” extension is to be ignored.
B. Rights or Legitimate InterestsThe Respondent has not reacted to the Complainants’ contentions. There is nothing before the Panel to indicate that the Respondent has rights or legitimate interests in the disputed domain name. The latter resolves to a website, which replicates the trademarks and logos of the Complainants, and that without any license or authority to do so. The relevant website offers either unauthorized parallel imported products or counterfeit products for sale, but the salient fact is that the website to which the disputed domain name resolves masquerades by its replication of marks and logos associated with and owned by the Complainants, as an official website of the latter. This activity is not of a kind to give rise to rights or legitimate interests. In any case a party is not automatically entitled to register a domain name identical to the trademark of a Complainant for the sake of establishing an online store even to sell entirely legitimate goods of a Complainant. The Respondent is not known by the Complainants’ relevant trademarks or by the disputed domain name and is not in any way authorized by the Complainants to use its marks.
Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithThe goods offered on the website to which the disputed domain name resolves are either counterfeit goods or unauthorized parallel imported goods, as the Complainants variously asserts. However, whatever the case may be in that regard, the fact is that the website to which the disputed domain name resolves includes the trademarks and logos of the Complainants. The Respondents do not have the license or authority of the Complainants to use its marks and identifiers in this or any manner. The false impression generated by the Respondent is that of an official website that offers authorized goods for sale, which is not the case. It is inconceivable that the Respondents registered the disputed domain name in ignorance of the Complainants’ rights and reputation in its SHELLAC trademarks, since they are distinctive and widely reputed in relation to nail varnish and like embellishments. The composition of the website to which the disputed domain name resolves, with its incorporation of signs that belong to the Complainants, further indicates that the disputed domain name was initially registered in bad faith. It also establishes that it is used in bad faith, because whatever the truth may be concerning the legitimacy of the goods offered for sale, the Respondent is not entitled to register a domain name identical to the trademark of a Complainant, then to establish a website which gives the false impression of affiliation or official authorization of the trademark owner by including further official identifiers of the said Complainants.
Therefore, the Panel holds that the disputed domain name was registered and used in bad faith.
7. DecisionFor 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
William A. Van Caenegem
Sole Panelist
Date: December 7, 2021