WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Elizabeth Taylor Cosmetics Company v. NOLDC, Inc

Case No. D2006-0800

 

1. The Parties

Complainant is The Elizabeth Taylor Cosmetics Company, New York, New York, United States of America, represented by Frost Brown Todd LLC, United States of America.

Respondent is NOLDC, Inc, New Orleans, Louisiana, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <elizabethtaylorperfume.com> (the “Domain Name”) is registered with Intercosmos Media Group, Inc. d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2006. On June 28, 2006, the Center transmitted by e-mail to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On June 28, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 28, 2006.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 9, 2006. 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 states (and has provided certificates of registration showing) that it is the registrant of each of the following U.S. trademark registrations:

- ELIZABETH TAYLOR, U.S. Reg. No. 1,827,152 for use in connection with perfume and cologne. Registered March 22, 1994.

- ELIZABETH TAYLOR’S PASSION, U.S. Reg. No. 1,537,104, for use in connection with cologne. Registered May 2, 1989.

- GARDENIA ELIZABETH TAYLOR, U.S. Reg. No. 3,018,407, for use in connection with eau de parfum, eau de toilette, body cream, body lotion, bath soap, body mist, body powder, bath powder, bath and shower gel, bath crystals, body oil. Registered November 22, 2005.

- ELIZABETH TAYLOR BLACK PEARLS, U.S. Reg. No. 2,162,334, for use in connection with parfum, eau de parfum, body lotion and bath and shower gel. Registered June 2, 1998.

Collectively, the above four trademarks are referred to hereinafter as the “ELIZABETH TAYLOR Trademarks.”

Complainant states that the Academy-award-winning actress Elizabeth Taylor – described by Complainant as “one of the most beautiful American actresses in history” who “stands as one of the last symbols of Hollywood’s golden era” – has assigned to Complainant her rights with respect to the use of her name and the trademark ELIZABETH TAYLOR in connection with perfumes and beauty products.

Complainant states that “through its exclusive licensee Elizabeth Arden, Inc., [Complainant] has used the ELIZABETH TAYLOR mark on some of the world’s most popular perfumes, including: White Diamonds, Elizabeth Taylor’s Passion, Forever Elizabeth and Gardenia” and that “[g]lobal sales of the Elizabeth Taylor branded cosmetics… exceed $100 million, annually.”

Complainant states that “[s]ince 1987, the Elizabeth Taylor perfumes and cosmetics have been advertised extensively throughout the United States and the world in print media, on radio and television and through sponsorship of public events. Because of this extensive and uniform promotion, marketing and advertisement, the general public and those persons interested in purchasing perfumes and cosmetics have come to associate the Elizabeth Taylor Marks exclusively with The Elizabeth Taylor Cosmetics Company.”

Complainant states that “through its exclusive licensee, Elizabeth Arden, Inc., [Complainant] has spent over $19 million on advertising and marketing perfumes and cosmetics bearing the Elizabeth Taylor Marks during the last four years alone.”

The Domain Name was created on June 9, 2005.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is confusingly similar to the ELIZABETH TAYLOR Trademarks because the Domain Name includes one of the marks in its entirety, citing Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512, and Wal-Mart Stores, Inc. v. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name because Respondent “is not a licensee of, or otherwise currently affiliated with, The Elizabeth Taylor Cosmetics Company. [Respondent’s] name does not include the words ‘Elizabeth Taylor’ and [Respondent] does not make or sell any perfumes, let alone Elizabeth Taylor perfumes. [Respondent’s] business has nothing to do with the links relating to perfume currently located on ELIZABETHTAYLORPERFUME.COM other than [Respondent] profits, in bad faith, from misdirecting those searching for information on Elizabeth Taylor perfumes to those links.” Complainant further contends that Respondent “has no rights or legitimate interests in respect to its use of ELIZABETHTAYLORPERFUME.COM. [Respondent’s] use of this domain to direct traffic to other websites for profit is not a legitimate use. [Respondent] clearly has no intention of making any legitimate use of the ELIZABETHTAYLORPERFUME.COM domain, nor could it, given the absolute and transparent attempt to trade off of the Elizabeth Taylor Marks.”

Complainant contends that the Domain Name was registered and is being used in bad faith because “Respondent registered the <elizabethtaylorperfume.com> domain name in an effort to capitalize on the recognition of the Elizabeth Taylor Marks by those seeking Elizabeth Taylor perfumes and to capitalize from the misdirected traffic resulting from those who visit elizabethtaylorperfume.com.” A website associated with the Domain Name, the home page of which was provided as an exhibit by Complainant, contains many links to various products and services, including links to “Elizabeth Taylor Perfume,” “White Diamonds,” “Elizabeth Arden” and “Black Pearl.” Complainant contends, without elaboration, that Respondent “makes money every time someone follows one of those sponsored links.” Complainant contends that Respondent “has registered and is using the <elizabethtaylorperfume.com> domain in bad faith to benefit from misdirected traffic in search of information on Elizabeth Taylor perfumes, The Elizabeth Taylor Cosmetic Company and the products of its licensee, Elizabeth Arden, Inc.” Complainant contends that “all of the content currently on the [website associated with the] domain is misleading and confusing to consumers. The domain was registered and is being used in bad faith, with a clear intent to profit from confusion.”

Complainant also contends that a number of complaints have been filed against Respondent (under Respondent’s name or under other names) under the Policy, resulting in numerous decisions ordering the transfer of domain names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

As to whether the Domain Name is identical or confusingly similar to Complainant’s ELIZABETH TAYLOR Trademarks, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “elizabethtaylorperfume”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Case No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).

Although “elizabethtaylorperfume” is not identical to any of the ELIZABETH TAYLOR Trademarks, it is obviously similar. The similarity is particularly relevant given Complainant’s significant offering of perfumes under the ELIZABETH TAYLOR name. See Yellow Corporation v. MIC, WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”).

In this case, the “disputed domain name incorporates the whole of the Complainant’s trademark… together with [a] descriptive [phrase]… associated with the Complainant and its renowned activities.” Playboy Enterprises International, Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa, WIPO Case No. D2001-0745; see also Playboy Enterprises International, Inc v. Frederico Concas, WIPO Case No. D2002-0074.

As a result, the Domain Name is confusingly similar to Complainant’s ELIZABETH TAYLOR Trademarks, and the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges that Respondent “has no legitimate interest in the <elizabethtaylorperfume.com> domain. [Respondent] is not a licensee of, or otherwise currently affiliated with, The Elizabeth Taylor Cosmetics Company. [Respondent’s] name does not include the words ‘Elizabeth Taylor’ and [Respondent] does not make or sell any perfumes, let alone Elizabeth Taylor perfumes. [Respondent’s] business has nothing to do with the links relating to perfume currently located on ELIZABETHTAYLORPERFUME.COM other than [Respondent] profits, in bad faith, from misdirecting those searching for information on Elizabeth Taylor perfumes to those links.”

Complainant further alleges that Respondent “has no rights or legitimate interests in respect to its use of ELIZABETHTAYLORPERFUME.COM. [Respondent’s] use of this domain to direct traffic to other websites for profit is not a legitimate use. [Respondent] clearly has no intention of making any legitimate use of the ELIZABETHTAYLORPERFUME.COM domain, nor could it, given the absolute and transparent attempt to trade off of the Elizabeth Taylor Marks.”

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” paragraph 2.1, <http://www.wipo.int/amc/en/domains/search/overview/index.html> (visited August 18, 2006).1

Accordingly, as a result of Complainants’ allegations and without any evidence of Respondent’s rights or legitimate interests in the Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by, among other things, evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location. Paragraph 4(b) of the Policy.

Web pages of the type used by Respondent in connection with the Domain Name – sometimes known as an “online domain monetization system,” a “monetized parking page” or a “paid link farm service” – have become an “increasingly popular way for domain name registrants to profit from their activity with little effort.” Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850. Such uses do not necessarily create bad faith. For example, “where the links on such a page are not competitive with or disruptive to a relevant trademark owner, or confusing to visitors, such activity may not violate the Policy.” Id. Here, however, given the widespread use of the ELIZABETH TAYLOR Trademarks on the website associated with the Domain Name and the lack of any indication that the website is not associated with Complainant, it is likely that a website visitor would be led to such website, or make decisions once he or she has arrived at such website, based on a mistaken belief that Complainant is the source of the website or that Complainant has sponsored, is affiliated with or has endorsed the website – a result that constitutes bad faith under paragraph 4(b)(iv) of the Policy.

Furthermore, the Panel agrees with the decision cited by Complainant, Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, that “the Domain Name is so obviously connected with the Complainant and its services that its very use by someone with no connection to the Complainant suggests ‘opportunistic bad faith’.”

Therefore, the Panel is satisfied that Complainant has proven the third element required by the Policy.

 

7. Decision

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 <elizabethtaylorperfume.com> be transferred to Complainant.


Douglas M. Isenberg
Sole Panelist

Dated: August 18, 2006


1 “Although the WIPO Decision Overview is not precedential in nature, it does reflect a studied and considered summary of consensus positions culled from the decisions of numerous panelists during the first five years of administration of the UDRP. When such a consensus has developed, it is incumbent upon panels to follow the consensus (or the majority view) to promote consistency among UDRP decisions.” Fresh Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO Case No. D2005-0061, at n.3.