Complainant is Deciem Beauty Group Inc., Canada, represented by Gowling WLG (Canada) LLP, Canada.
Respondent is 张伟 (Zhang Wei), 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 October 30, 2020. On November 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 3, 2020, 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 Complainant on November 3, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on November 3, 2020. On November 3, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant confirmed the request that English be the language of the proceeding on November 3, 2020. Respondent did not comment on the language of the proceeding. 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 Respondent of the Complaint, and the proceedings commenced on November 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2020. On November 3, 2020, Respondent sent an email in English to the Center regarding possible settlement. On November 4, 2020, Complainant replied to Respondent’s email, stating that Complainant did not agree with nor reach a settlement with Respondent. On December 14, 2020, the Center notified the Parties it would proceed to appoint the panel. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on January 4, 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 Complainant is a Canadian-based skin care and beauty company. Since its launch in 2013, Complainant has more than 50 products sold in markets around the world. Complainant’s sales of DECIEM have been in excess of USD 100 million dollars globally. Complainant is the owner of numerous trademark registrations worldwide that contain DECIEM (collectively, the “DECIEM Trademarks”), including: Canadian trademark no. 1004169 for DECIEM, registered on September 5, 2018; Complainant also operates a website at “www.deciem.com”. Respondent registered the Domain Name on February 21, 2019. The record shows that the Domain Name resolved to a website promoting the sale of the Domain Name. At the time of the Decision, the Domain Name diverts traffic to a website advertising and featuring the use of Bitcoin currency systems and investments. 5. Parties’ Contentions A. Complainant Complainant contends that (i) the Domain Name is confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith. In particular, Complainant contends that it has trademark registrations for the DECIEM marks and owns and operates a website incorporating the DECIEM mark. Complainant contends that Respondent registered and is using the Domain Name, which incorporate Complainant’s DECIEM mark in its entirety, to confuse Internet users looking for bona fide and well-known DECIEM products and services. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s mark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Procedural Issue – Language of the Proceeding The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. Complainant submits in its communication to the Center on November 3, 2020 and in the Complaint that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement is in Chinese. Complainant contends that the Domain Name was registered in English, and the Domain Name resolves to a website that is entirely in English. Complainant also contends that the translation of all case relevant documents would unfairly disadvantage Complainant, and that it would be too cost-intensive and the proceeding would be unnecessarily delayed if the proceedings were to be held in Chinese. In exercising its discretion to use a language other than that of the outstanding subject 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. The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that in any case, all of the communications from the Center to the Parties were transmitted in both Chinese and English. Respondent chose not to comment on the language of the proceeding. In addition, Respondent sent an email in English to the Center on November 3, 2020, offering to settle, indicating Respondent’s ability to communicate in English. The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. 6.2. Substantive Issues Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name was registered and is being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the DECIEM marks, which have been registered since at least as early as 2014, well before Respondent registered the Domain Name on February 21, 2019 as noted above. Complainant has also submitted evidence, which supports that DECIEM is a widely known trademark and a distinctive identifier of Complainant’s products. Complainant has therefore proven that it has the requisite rights in the mark DECIEM. With Complainant’s rights in the DECIEM marks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the generic Top-Level Domain (“gTLD”) in which it is registered (in this case, “.co”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. Here, the Domain Name is identical to Complainant’s DECIEM trademark. The DECIEM mark, which is fanciful and inherently distinctive, is completely incorporated in the Domain Name. Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the DECIEM marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the DECIEM trademarks or to seek registration of any domain name incorporating the trademarks. In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that the Domain Name resolves to a website promoting the sale of the Domain Name and also diverts traffic to a third party website advertising and featuring the use of Bitcoin currency systems and investments. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name. Further, the nature of the Domain Name carries a high risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1). Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: “(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The Panel finds that Complainant provided ample evidence to show that registration and use of the DECIEM marks long predate the registration of the Domain Name by Respondent. Complainant is also well established and known worldwide, including China, where Respondent resides and operates. Therefore, Respondent was likely aware of the DECIEM marks when he registered the Domain Name, or knew or should have known that the Domain Name was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Under the circumstances, Respondent’s registration of the Domain Name incorporating Complainant’s widely-known DECIEM trademark in its entirety, suggests that Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the DECIEM mark, in an effort to opportunistically capitalize on the registration and use of the Domain Name. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks. As discussed above, the Domain Name resolves to a website promoting the sale of the Domain Name and diverts traffic to a third party website advertising and featuring the use of Bitcoin currency systems and investments. Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website. In addition to the circumstances referred to above, Respondent’s failure to file a formal response is further indicative of Respondent’s bad faith. Accordingly, the Panel finds that Respondent has registered and used the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 Kimberley Chen Nobles
Canadian trademark no. 884741 for DECIEM, registered on August 26, 2014;
Chinese trademark no. 17096399 for DECIEM, registered on October 28, 2016;
Chinese trademark no. 29262144 for DECIEM, registered on January 28, 2020;
European Union Trade Mark No. 12914644 for DECIEM, registered on October 20, 2014;
European Union Trade Mark No. 17803081 for DECIEM, registered on June 8, 2018;
European Union Trade Mark No. 16891681 for DECIEM, registered on October 16, 2017;
Hong Kong Trademark No. 303428389 for DECIEM, registered on June 2, 2015;
Hong Kong Trademark No. 304433274 for DECIEM, registered on February 13, 2018;
Japanese Trademark No. 5831260 for DECIEM, registered on March 4, 2016;
Japanese Trademark No. 6114037 for DECIEM, registered on January 11, 2019;
Singapore Trademark No. 40201509262V for DECIEM, registered on June 2, 2015;
Singapore Trademark No. 40201802555T for DECIEM, registered on February 12, 2018;
United States of America (“United States”) Trademark No. 5731100 for DECIEM, registered on April 23, 2019;
United States Trademark No. 5754274 for DECIEM, registered on May 21, 2019;
United States Trademark No. 4750284 for DECIEM, registered on June 9, 2015.
Sole Panelist
Date: January 18, 2021
Full & Egal Universal Law Academy