WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Natura Cosméticos S/A and Indústria e Comércio de Cosméticos Natura Ltda. v. N/A

Case No. D2008-1128

 

1. The Parties

Complainants are Natura Cosméticos S/A, Itapecerica da Serra, São Paulo, Brazil, and Indústria e Comércio de Cosméticos Natura Ltda., Cajamar, São Paulo, Brazil, represented by Ricci Advogados Associados, Brazil.

Respondent is N/A, Lisboa, Portugal.

 

2. The Domain Name and Registrar

The disputed domain name <naturaportugal.com> is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2008. On July 28, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On the same day, Tucows transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 August 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 25, 2008.

The Center appointed Roberto Bianchi as the sole panelist in this matter on September 3, 2008. 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 following facts are undisputed:

- Complainants are well known Brazilian companies doing business in the field of cosmetic and medicinal products, among other activities.

- Complainants or other companies owned by Complainants own the NATURA trademark for cosmetics in Brazil and France, as well as an international registration of the mark NATURA based on the French priority registration.

- Respondent registered the disputed domain name on February 23, 2008.

 

5. Parties’ Contentions

A. Complainant

In their complaint, Complainants contend as follows:

- The disputed domain name consists of a total reproduction of Complainants’ mark NATURA, which causes an undue association with Complainants in Portugal and other Portuguese-speaking countries. This violates both Brazilian intellectual property law and the Paris Convention, CUP (Articles 1, 3, 6-bis, 6 “quinquies” C1, 8 and 10-bis).

- Respondent has no rights or legitimate interests in the domain name in dispute.

- Respondent registered and is using the domain name in bad faith. Respondent is illegitimately leading the consumer public into confusion, making them believe that the products announced by Respondent are somehow related to the ones produced by Complainants.

B. Respondent

Respondent did not reply to Complainants’ contentions, and is in default.

 

6. Discussion and Findings

UDRP Panels must decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any applicable rules and principles of law. Under paragraph 4(a) of the Policy, a complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

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

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

By submitting copies of a registration certificate issued by the Brazilian Institute of Industrial Property (INPI) and printouts taken from the INPI website, Complainants proved that Indústria e Comércio de Cosméticos Natura Ltda. has rights in the word mark NATURA Reg. No. 815211759, covering auxiliary services to trade, including import and export operations of class 40.15, and that Natura Cosméticos S/A owns the word mark NATURA Reg. No. 815082649, covering products of class 3.20.

The disputed domain name incorporates the NATURA trademark in its entirety, with the only addition of the geographic name “Portugal”, which cannot distinguish the domain name from Complainant’s mark. See InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076 (finding the mere addition of the word “India” insufficient to distinguish the domain name from the trademarks of the Complainant, as it appears to be made most likely to induce Internet users to believe that they are connecting with a site of an Indian affiliate or to some “Indian operation” of the Complainant); see also Advance Magazine Publishers Inc. v. Vanilla Limited/ Domain Finance Ltd./ Minakumari Periasany, WIPO Case No. D2004-1068 (holding that the addition of a geographic modifier such as in <floridavogue.com> does not in any way remove or dilute the likely confusion that arises from the registration of the domain name).

The Panel finds that the domain name is confusingly similar to Complainants’ mark.

B. Rights or Legitimate Interests

Complainants contend that Respondent is using their trademark NATURA without any authorization from them, that Respondent is announcing products that only supposedly are from Complainants, and that Respondent has no legal or business relationship to Complainants. Complainants support these contentions with printouts taken from the website at the disputed domain name, obtained on June 18, 2008. In absence of any evidence in favor of Respondent, these contentions and supporting evidence are sufficient to make out a prima facie case that Respondent lacks rights or legitimate interests in respect of the domain name at issue.

Once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. Otherwise, a complainant is deemed to have satisfied the Policy paragraph 4(a)(ii). See “WIPO Overview of WIPO Panel Views” at http://www.wipo.int/amc/en/domains/search/overview/index.html.

Respondent is in default, and has not provided any evidence in its own favor.

Accordingly, the Panel finds that the second element of the Policy is met.

C. Registered and Used in Bad Faith

Complainants have shown with printouts from Respondent’s website at the disputed domain name obtained on June 18, 2008, that Respondent’s website presents itself as “Natura Brasil em Portugal”, thus representing itself either as being Complainants’ representative or Complainants’ operation in Portugal. Complainants also show that the main web page at this site is displaying Complainant’s logo, and that the website is being used to sell cosmetic products online. It appears that Complainants have authorized none of these uses of the mark NATURA. Respondent has not contested Complainants´ evidence.

Clearly, Respondent’s behavior falls within the description of Policy paragraph 4(b)(iv) (“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.). As this is a circumstance of bad faith registration and use of the domain name, the Panel finds that the third element of the Policy is met.

 

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 <naturaportugal.com> be transferred to Complainants.


Roberto Bianchi
Sole Panelist

Dated: September 17, 2008