The Complainant is Beauté Pacifique ApS of Hadsund, Denmark, represented by Patrade A/S, Denmark.
The Respondent is Polu Chan, Teesnow of Clayton, Victoria, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2018. On July 31, 2018, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the Domain Name. On August 1, 2018, GoD, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to an email by the Center requesting the Complainant to add the organizational name to the Respondent identified in the Complaint, the Complainant filed an amendment to the Complaint on August 11, 2018.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 14, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2018. Several brief emails were received from the Respondent on August 14 and September 6, 2018, however no official Response was filed with the Center.
The Center appointed Alan L. Limbury as the sole panelist in this matter on September 17, 2018. 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 the proprietor of International registered trademark BEAUTÉ PACIFIQUE, No. 1253411, registered on April 30, 2015 in classes 3 and 35, designating Australia, China and the United States of America. That mark attained recognition and consequent registration in Australia on April 30, 2015, No. 1702839, with effect from April 30, 2015. The goods in Class 3 in respect of which the mark is registered include astringents for cosmetic purposes, lotions for cosmetic purposes, make-up removing preparations and beauty masks.
The Domain Name was registered on October 23, 2017. It resolves to a website promoting make-up and skin care services. 5. Parties’ Contentions A. Complainant
The Complainant says the Domain Name is identical to its BEAUTÉ PACIFIQUE trademark and that the Respondent has no rights or legitimate interests in respect of the Domain Name, which was registered or is subsequently being used in bad faith.
As to legitimacy, the Complainant says the Respondent is taking advantage of the reputation and distinctiveness of the Complainant’s trademark in order to attract the relevant consumers of the trademark. The Respondent’s website does not refer to the specific products marketed by the Complainant bearing the Complainant’s trademark. Therefore, the Domain Name is being used in order to attract the relevant consumers to the Respondent’s own services by misleadingly diverting them to the website in question. Thus, the Respondent has intentionally attempted to attract consumers for commercial gain by creating a likelihood of confusion with the Complainant’s trademark and therefore has no legitimate interests in respect of the Domain Name.
As to bad faith, the Complainant says it is well known in Australia. It has been on the Australian market for several years and has comprehensive sales throughout Australia. In the light of this consumers will believe that the two undertakings are the same or at least commercially affiliated because of the identity between the Respondent’s Domain Name – under which the goods are sold – and the trademark of the Complainant, let alone the high degree of similarity between the goods and services. By being commercially active on the market for make-up and skin care products and providing services such as “beauty care and makeup tips”, the Respondent must know or should know the trademark of the Complainant, as the Respondent primarily conveys the sales of skin care products under the trademark BEAUTÉ PACIFIQUE. A simple Google search of “Beauté Pacifique + Australia” also reveals the Complainant’s trademark and business name of Beauté Pacifique.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4, the mere registration of a domain name that is identical or confusingly similar to a widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The presumption is in this case enhanced by the fact that the goods and services provided on the website of the Domain Name are identical or similar to a high degree to those of the registered trademark of the Complainant.
The Complainant seeks transfer of the Domain Name to its subsidiary, Beauté Pacifique Australia Pty. Ltd., ABN 11 621 131 235, alternatively cancellation. B. Respondent
As mentioned, the Respondent failed to file a formal Response. In informal emails to the Center, the Respondent stated that, one week before being notified of the Complaint, the Respondent offered to sell the Domain Name to the Complainant for USD 300; that the Complainant had allowed the Domain Name to expire and the Respondent purchased it. Now, 6 months later, the Complainant wants it back and refuses to pay USD 300 for it after the Respondent spent time and effort setting up the site for an affiliate program. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles it is to use in determining this dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires the Complainant to prove:
(i) the Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered or subsequently used in bad faith. A. Identical or Confusingly Similar
The Domain Name is identical to the Complainant’s mark, the absence of the acute accent and the presence of the country code Top-Level Domain (“ccTLD”) “.” being inconsequential. B. Rights or Legitimate Interests
The Complainant’s contentions suffice to establish a prima facie case of absence of rights or legitimate interests in the Domain Name on the part of the Respondent, thereby shifting the onus of production to the Respondent, whose informal emails by way of response fail to establish any such rights or legitimate interests. C. Registered or Subsequently Used in Bad Faith
The Domain Name was registered more than 2 years after the Complainant registered its mark in Australia and the United States of America, so the Respondent was very likely aware of the Complainant’s mark at that time. It is unnecessary to make a finding of bad faith registration because the Respondent’s use of the Domain Name for a website promoting products and services similar to those of the Complainant is clearly designed to trade off the reputation of the Complainant’s mark. These circumstances establish that the Respondent has subsequently used the Domain Name in bad faith. 7. Decision
The Complainant has requested transfer of the Domain Name to its subsidiary, Beauté Pacifique Australia Pty. Ltd., ABN 11 621 131 235, alternatively cancellation. Given that its company name contains the text “Beauté Pacifique”, the subsidiary satisfies the eligibility requirements for registration of the Domain Name, having regard to the auDA 2012-04 - Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs and 2012-05 - Guidelines on the Interpretation of Policy Rules for Open 2LDs.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Beauté Pacifique Australia Pty. Ltd., ABN 11 621 131 235.
Alan L. Limbury
Sole Panelist
Date: September 28, 2018
Full & Egal Universal Law Academy