WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Essie Cosmetics Limited v. Dong Jang

Case No. D2001-0303

 

1. The Parties

The Complainant is Essie Cosmetics Limited, a New York corporation having its principal place of business at 19-19 37th Street, Astoria, New York 11105, USA.

The Respondent is Dong Jang located at 163 Center Road, Woodbridge, Connecticut 06525, USA.

 

2. The Domain Name and Registrar

The domain name at issue is <essie.com>. The Registrar is Network Solutions, Inc., located in Herndon, Virginia, USA.

 

3. Procedural History

A Complaint dated March 1, 2001, was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") by e-mail on March 2, 2001, and in hard copy on March 7, 2001, as stated in the Centerís Notification of Complaint and Commencement of Administrative Proceeding dated March 9, 2001 ("Commencement Notification"). On March 8, 2001, the Registrar confirmed receipt of the Complaint and registration of the domain name through the Registrar. The Registrar indicated that Respondent was the current registrant. The Commencement Notification was sent by the Center to Respondent both as Respondent and as Administrative, Technical and Billing Contact by post/courier, facsimile and e-mail with a copy to Complainant (by e-mail).

The Commencement Notification stated that in accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 ("Policy"), Rules and Supplemental Rules. The Commencement Notification further stated that payment in the required amount was made by the Complainant to the Center. The Commencement Notification set the deadline for responding to the Complaint at March 28, 2001.

Having reviewed the communications records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."

On March 30, 2001, having received no response from Respondent, the Center transmitted to the parties a Notification of Respondent Default by e-mail. No response or other document has been received by the Center from Respondent since the Notification of Default.

The Administrative Panel finds that Respondent received notice of the Complaint and failed to submit a response as required by Paragraph 5 of the Rules or, if Respondent did not receive notice of the Complaint, such failure is due to Respondentís failure to provide updated contact information to the Registrar as required by Paragraph 5 of the Registrarís domain name registration agreement. Accordingly, Respondent is in default and pursuant to Paragraph 14(a) of the Rules, the Administrative Panel shall proceed to a decision based on the allegations in the Complaint, the Rules and the Supplemental Rules, and shall draw such inferences as it considers appropriate.

In view of Complainantís election to have the proceeding decided by a single-member Administrative Panel, on April 6, 2001, the Center invited Carol Anne Been to serve as a panelist in this proceeding, and transmitted to her a Statement of Acceptance and Request for Declaration of Impartiality and Independence. The Center received Ms. Beenís Statement of Acceptance and Declaration of Impartiality and Independence on

April 9, 2001. On April 11, 2001, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Ms. Been was formally appointed as the Panelist. The Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

In the Notification of Appointment of Administrative Panel, the Projected Decision Date for the Administrative Panel to forward the decision to the Center was set for

April 24, 2001. The Transmission of Case File to Administrative Panel was dated April 11, 2001. English is the language of the proceeding.

 

4. Factual Background

The facts as presented in the Complaint are as follows. Complainant is engaged in the business of selling cosmetics, including nail polish and lipstick. Complainant is the owner of two United States trademark registrations for the mark, ESSIE COSMETICS: Registration No. 1,712,921 issued September 8, 1992 for nail polish, claiming first use in 1982, and Registration No. 1,767,850 issued April 27, 1993 for cosmetics, namely lipstick, claiming first use in 1992. In both registrations, Complainant has disclaimed exclusive rights in the word COSMETICS. Although Complainant does not plead them, a review of the public record found at <uspto.gov> shows that Complainant also has two newly-filed applications for United States trademark registration of the mark ESSIE, Application Serial No. 76/230,469 for nail care preparations and lipstick, claiming first use in 1982, and Application Serial No. 76/230,418 for nail polish, claiming first use in 2000 but use in another form in 1982. The latter application is for the design of a clear nail polish bottle with a combined cap and brush applicator which bears the word ESSIE.

Complainant pleads that it has exclusively and continuously marketed its products under the marks ESSIE COSMETICS and ESSIE since 1982, and has acquired common law rights in the ESSIE mark.

The marks ESSIE COSMETICS and ESSIE are alleged to be based on the name of the founder and president of Complainant, whose given name is "Esther" and who is commonly known as "Essie."

Respondent Dong Jang registered the domain name at issue on December 5, 1999. Dong Jang is listed as the administrative, technical and billing contact. This domain name currently does not connect to any website.

On October 11, 1998, Respondent registered the domain name <nailsupply.com>. At that domain name, "Coming Soon" and "Under Construction" notices are posted on the home page. The page also shows a graphic of a pair of womanís hands with polished fingernails under the "Nail Supply™" name.

Respondent also has registered several other domain names, including some that appear to be based on the marks of others, such as <visaclassic.com> and <1800excite.com>.

On or about August 16, 2000, Complainantís attorneys sent notice to Respondent of Complainantís rights and objection to Respondentís acquisition and use of the domain name at issue. Respondent did not respond to that communication and thus did not contest Complainantís rights or assert the legitimacy of Respondentís registration and use of the domain name.

 

5. Partiesí Contentions

A. Complainant

Complainant contends that the domain name at issue is identical or confusingly similar to Complainantís registered mark ESSIE COSMETICS or its common law mark ESSIE.

Complainant contends that Respondent has no rights or legitimate interest in the domain name. In support of this contention, Complainant states that Respondent has not established a website at the domain name; has not acquired any trademark rights in the domain name (Respondent has not filed any application for United States trademark registration of the domain name, as shown by a review of the public record found at <uspto.gov>); and, on Complainantís information and belief, has at no time conducted a business incorporating or using the name ESSIE. Complainant is not aware of any evidence that the domain name is associated with or descriptive of any business of Respondent; that Respondent is known as ESSIE; or that Respondent is making any legitimate non-commercial or fair use of the domain name.

Complainant further contends that Respondent has registered and used the domain name for illegitimate, bad faith purposes because Respondent has disrupted Complainantís business by preventing Complainant from developing its website at the domain name reflecting its trademarks. Further, Respondent also has registered the domain name <nailsupply.com> which Complainant presumes will sell nail care products in competition with Complainant. Complainant claims that Respondent has engaged in a pattern of registering domain names that correspond to the trademarks of others, citing <visaclassic.com>, <1800greencard.com>, <1800whois.com> and <1800excite.com>. Lastly, Complainant contends that Respondentís failure to respond to its counselís communication of August 16, 2000 to explain his use or seek a solution is indicative of bad faith.

B. Respondent

Respondent has not filed a response and thus has not contested the allegations of the Complaint. By failing to file a response, Respondent has not provided the Administrative Panel with any information to counter the allegations of Complainant, including the implications of his registration of both the domain name at issue and the domain name <nailsupply.com>.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and used in bad faith.

A. Similarity of the Domain Name to Complainantís Trademarks

Complainant has alleged that it has registrations and common law trademark rights in the marks ESSIE COSMETICS and ESSIE, and has been using such marks for cosmetics since 1982. Respondent has registered the domain name <essie.com>. The Administrative Panel holds that the domain name <essie.com> is confusingly similar to Complainantís ESSIE COSMETICS and ESSIE marks.

B. No Legitimate Interests

There is no evidence in the record of any legitimate interest of Respondent in the ESSIE mark or the domain name, <essie.com>, such as Respondentís use of a corresponding name to identify himself or his business, to offer goods or services, or to make legitimate noncommercial or fair use of the domain name. Because Respondent declined to respond to the Complaint, the Administrative Panel may conclude from Respondentís failure to respond and provide contrary evidence that no such evidence exists. Mondich v. Brown, Case No. D2000-0004 (WIPO February 16, 2000) ("It is a general principle of United States law that the failure of a party to submit evidence on facts in its control may permit the court to draw an adverse inference regarding those facts."). Thus, the Administrative Panel holds that Respondent has no rights or legitimate interests in the domain name.

C. Registration and Use in Bad Faith

Respondent has registered the domain name <nailsupply.com> and has posted there a page with a graphic showing a pair of womanís hands with polished nails. Respondentís webpage indicates that this site is coming soon and under construction. Based on these facts, the Administrative Panel concludes that Respondent is involved in or planning to enter the cosmetics business concerning care of the fingernails. One who is involved in or planning to enter this business is likely to be familiar with Complainant and its nail care products. Although more than a year passed between Respondentís registration of <nailsupply.com> and of the domain name at issue, Respondentís registration of both domain names is unlikely to be a mere coincidence. The mark ESSIE is not a generic term and, although it is a diminutive for the given name "Esther," the term ESSIE is not widely used. Respondent has declined to take the opportunity to file a response to inform the Administrative Panel otherwise. Thus, the Administrative Panel concludes that registration of the domain name at issue was made with awareness of Complainantís rights in the ESSIE COSMETICS and ESSIE marks and in an attempt to capitalize on those rights in some manner, reflecting bad faith under Sections 4(b)(iii) and (iv) of the Policy, absent any contrary indication from Respondent.

Respondentís registration of domain names incorporating what appear to be trademark rights of others, such as <visaclassic.com> and <1800excite.com>, is indicative of a pattern of such conduct and is further supportive of the above evidence of bad faith under Section 4(b)(ii) of the Policy, absent any contrary indication from Respondent.

Respondent has used the domain name in bad faith by making preparations to offer nail care products through the <nailsupply.com> website, thus foreshadowing the proposed manner of use, even though the domain name at issue does not presently link to an operable website. See Telstra Corp. Ltd. v. Barry Cheng Kwok Chu, Case No. D2000-0423 (WIPO June 21, 2000).

 

7. Decision

Accordingly, pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Administrative Panel requires that the domain name <essie.com> registered by Respondent Dong Jang be transferred to Complainant, Essie Cosmetics Limited.

 


 

Carol Anne Been
Sole Panelist

Dated: April 24, 2001