ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Deciem Beauty Group Inc. v. Michael Nava, Brand Boogie LLC Case No. DCO2024-0082 1. The Parties 1.1 The Complainant is Deciem Beauty Group Inc., Canada, represented by Gowling WLG (Canada) LLP, Canada. 1.2 The Respondent is Michael Nava, Brand Boogie LLC, United States of America (United States). 2. The Domain Name and Registrar 2.1 The disputed domain name (the “Domain Name”) is registered with Dynadot Inc (the “Registrar”). 3. Procedural History 3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2024. At that time publicly available WhoIs details did not identify the registrant of the Domain Name. 3.2 On November 5, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 6, 2024, the Registrar transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the Domain Name. 3.3 The Center sent an email to the Complainant on November 8, 2024, 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 November 8, 2024. 3.4 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”). 3.5 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2024. The Respondent did not submit any
page 2 response. Accordingly, the Center notified the Respondent’s default on December 3, 2024. 3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on December 9, 2024. 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 4.1 The Complainant is a global skin care and beauty company, launched in 2013. It has sold over USD 100 million products under the DECIEM name, in over one hundred and twenty countries. 4.2 The Complainant is the owner of over 480 registered trade marks worldwide that comprise or incorporate the term “Deciem”. They include: (i) Canadian registered trade mark no TMA1004169 filed on June 16, 2017 and registered on September 5, 2018, for DECIEM as a word mark in classes 35 and 44; (ii) United States registered trade mark no 5731100 applied for on February 9, 2018 and registered on April 23, 2019, for DECIEM as a standard character mark in class 3; and (iii) European Union registered trade mark no 017803081 applied for on February 12, 2018 and registered on June 8, 2018, for DECIEM as a word mark in class 3. 4.3 The Complaint operates a website from the domain name to promote its business and products. 4.4 The Domain Name was registered on October 16, 2024. Since registration the Domain Name has directed Internet users to a GoDaddy holding page stating that the Domain Name is registered “but may still be available”. 4.5 Michael Nava of the Respondent has been identified as a respondent (either individually, or in connection with the companies Brand Boogie LLC or Domain Nerdz LLC) in at least 20 previous UDRP cases. More recent examples include Jumeirah International LLC v. Michael Nava, Domain Nerdz LLC, WIPO Case No. D2024-2161 () and Sbarro Franchise Co. LLC v. Michael Nava, Domain Nerdz LLC, WIPO Case No. DCO2023-0059 (). In each of these cases the panel ordered the transfer of the domain name to the complainant. 5. Parties’ Contentions A. Complainant 5.1 The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. 5.2 Notably, the Complainant contends that the entirety of its trade mark is incorporated into the Domain Name, and the Respondent has no rights or legitimate interest in the Domain Name. It also contends that notwithstanding that the Domain Name has not been used in connection with any active website, the facts of this case fall within the scope of paragraph 4(b)(iv) of the Policy. It further contends that the Respondent had actual or constructive knowledge of the Complainant rights at the time of registration of the Domain Name. The Complainant also refers to the other cases under the Policy involving Michael Nava, which are said to demonstrate that he has engaged in a pattern of registration of domain names that contain trade marks to which he is not entitled, that falls within the scope of paragraph 4(b)(ii) of the Policy.
page 3 B. Respondent 5.3 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar 6.1 It is generally accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. 6.2 The Panel finds the Complainant has shown rights in registered trade marks for the term “Deciem” for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. 6.3 The entirety of the mark is reproduced within the Domain Name, with the only addition being the “.co” country code Top-Level Domain (“ccTLD”). Accordingly, the Domain Name is at least confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. B. Rights or Legitimate Interests 6.4 Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. 6.5 In the present case the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Names. 6.6 However, dealing with the issue more directly, and for reasons that are set out in the context of its assessment of bad faith, the Panel is satisfied that the Domain Name inherently and deliberately impersonates the Complainant. In this respect, the Domain Name takes the form and the Panel is satisfied that the Domain Name was deliberately registered and held with knowledge of the Complainant’s marks and business and with the intention that it would be most likely understood by Internet users as controlled or authorised by the Complainant, when it is not. There is no right or legitimate interest in holding a domain name which takes such a form and is being held for such a purpose (see, for example, WIPO Overview 3.0, section 2.5.1) and the Panel is of the view that such impersonation and such activity provides positive evidence that no rights or legitimate interests exists. 6.7 In the circumstances, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith 6.8 The Panel is satisfied that the Domain Name inherently impersonates the Complainant, and that this impersonation was deliberate, in that the Domain Name was registered with actual knowledge of the Complainant’s marks and business, and with the knowledge and deliberate intention that it would be most likely understood by Internet users as controlled or authorised by the Complainant. 6.9 There are a number of reasons for this. First, the Panel is satisfied that the Complainant has for a number of years operated a substantial business in a number of jurisdictions using the term “Deciem”. Second, there is no obvious reading of the Domain Name other than as the term “Deciem” in conjunction with the “.co” ccTLD, and neither party has suggested to the Panel that the term “Deciem” has some obvious
page 4 meaning that is not associated with the Complainant’s mark or business.1 Third, there is no difference (other than the TLD) between the Domain Name and the domain name used by the Complainant for a website to promote its business. It strikes the Panel as improbable that the Respondent was not aware of the Complainant’s website when it registered the Domain Name. Fourth, and by no means least, the Panel is also satisfied that Michael Nava has a history of being involved in the registration of domain names that incorporate the trade mark of others, in a manner that falsely implies an association or affiliation with the trade mark holder. Many of those domain names have taken the form , and the form in particular. Two recent examples are given in the factual background section of this decision. 6.10 The Complainant contends that the Respondent’s activities fall within the scope of the examples of circumstances indicating bad faith registration and use set out at paragraphs 4(b)(ii) and/or 4(b)(iv) of the Policy. The Panel is not particularly persuaded by the Complainant’s contention by reference to some very early UDRP decisions, that there can be activity that falls within the scope of paragraph 4(b)(iv) where a domain name is not actually being used. Further, the Panel suspects that the most likely reason why the Domain Name was registered, was for sale to the Complainant or a competitor within the scope of the example of circumstances evidencing bad faith set out at paragraph 4(b)(i) of the Policy. This would be consistent with the holding page displayed from the Domain Name. The Panel also notes that this is what the panel found to be the most likely explanation for the Respondent’s conduct in Jumeirah International LLC v. Michael Nava, Domain Nerdz LLC, WIPO Case No. D2024-2161 (). 6.11 However, regardless of whether and to what extent the Respondent’s activities in this particularly falls into any particular example of the non-exhaustive set of examples of circumstances indicating bad faith set out in the Policy, the Panel finds that the Respondent has deliberately sought to register a domain name that inherently impersonates the Complainant in order to take unfair advantage of the Complainant’s marks (see section 3.1 of the WIPO Overview 3.0). The Panel is, therefore, more than satisfied that the Domain Name has been both registered and held in bad faith. 6.12 In the circumstances, the Panel finds that the Complainant has established the third element of the Policy. 7. Decision 7.1 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 be transferred to the Complainant. /Matthew S. Harris/ Matthew S. Harris Sole Panelist Date: December 17, 2024 1Google Translate suggests that the term “deciem” is Latvian for “for decades”, but it has not been claimed by the Respondent that it was with this meaning in mind that the Domain Name was registered, and any such claim would be inherently improbable.
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