The Complainant is Mirabella Beauty Products, LLC of California, United States of America, represented by Kleinberg & Lerner, LLP of United States of America.
The Respondent is TONEX, of Texas, United States of America.
The disputed domain name <imirabella.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2009. On March 17, 2009, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On March 17, 2009, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 20, 2009. 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2009. The Response was filed with the Center on April 13, 2009.
The Center appointed Dennis A. Foster as the sole panelist in this matter on April 20, 2009. 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.
Since 2001, the Complainant has been engaged in the production and sale of cosmetic products, distributed primarily in the United States of America. The Complainant owns a valid United States Patent and Trademark Office (“USPTO”) registration for the mark MIRABELLA (Registration No. 2935588, March 22, 2005).
The Respondent registered the disputed domain name, <imirabella.com>, on December 30, 2001. The Respondent uses the name to host a website that, among other things, displays a stylized mark, MIRABELLA, utilized by a Swedish beauty salon on its store fronts.
Since 2001, the Complainant has been in the business of providing cosmetics products for women, which are sold to hundreds of beauty salons throughout the United States of America. The owner of the Complainant has operated within the cosmetics industry for more than twenty years, providing the basis for the success of the Complainant's products.
Beginning with its inception, the Complainant has used the trademark, MIRABELLA. Subsequently the Complainant obtained a USPTO registration for that mark.
The disputed domain name, <imirabella.com>, is confusingly similar to the MIRABELLA mark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been commonly known as the disputed domain name. There is no evidence that the Respondent has made demonstrable preparations to use the name in connection with a bona fide offering of goods or services. The Respondent is not making noncommercial or fair use of the name.
The Respondent uses the domain name in question to host a website from which the Respondent merely collects click-through fees for linking Internet users to third party websites. Also, the Respondent's website presents improper and pornographic pictures, which tend to tarnish the Complainant's good reputation.
The disputed domain name was registered and is being used in bad faith. The Respondent made no use of the name until June 2003, long after the Complainant began using its trademark.
The Respondent registered the domain name at issue with the primary intent to sell it to the Complainant for a price far beyond the costs of registration. The Respondent is using the name to prevent the Complainant from reflecting its trademark in a corresponding domain name. By attempting to attract Internet users to its website through a likelihood of confusion with the Complainant's mark as to sponsorship or source, the Respondent is sending those users to third party websites for the Respondent's commercial gain.
The Respondent registered the disputed domain name, <imirabella.com>, before the Complainant's USPTO trademark filing date. Moreover, the Respondent initiated use of the name prior to the Complainant's USPTO registration of its trademark, MIRABELLA.
The Respondent has rights and legitimate interests in the domain name at issue because the Respondent is a business partner of the Mirabella Education Team located in Sweden.
The content found at the Respondent's website located at the disputed domain name is not scandalous but appropriate for its intended Swedish audience.
The primary intent for Respondent's registration of the disputed domain name was neither to sell it to the Complainant nor to prevent the Complainant from reflecting its trademark in a corresponding domain name. The Respondent has never engaged in such conduct. Instead, the Respondent registered the disputed domain name for use as a business partner of a legitimate Swedish company that has a similar trade name.
Under Policy paragraphs 4(a)(i) (iii), the Complainant may prevail in these proceedings and obtain a transfer of the disputed domain name, <imirabella.com>, if the Complainant can demonstrate that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name is registered and being used by the Respondent in bad faith.
The Complainant's presentation to the Panel of a valid USPTO trademark registration (Complaint Annex 3) demonstrates, to the Panel's satisfaction, that the Complainant possesses rights in the trademark MIRABELLA. See The Cyberbingo Corporation v. 207 Media Inc., WIPO Case No. D2005-0714; and Reebok International Limited v. Shaydon Santos, NAF Case No. FA565685 (“Complainant owns a United States Patent and Trademark Office (“USPTO”) registration issued September 5, 2000 for the RBK mark. This trademark registration is adequate to establish rights pursuant to Policy [paragraph] 4(a)(i).”).
The Panel is aware that said registration occurred after the registration of the disputed domain name, but the Panel chooses to follow the precedent accepted by the majority of prior UDRP panels that it is not critical for the Complainant to establish its trademark rights prior to domain name registration for the purposes of Policy paragraph 4(a)(i). For example, see Javacool Software Development, L.L.C. v. Elbanhawy Investments, NAF Case No. FA836772; and AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527 (“paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name.”).
The Panel observes that the disputed domain name, <imirabella.com>, is nearly identical to the Complainant's mark, MIRABELLA. The only deviations are the addition of a beginning letter “i” and the gTLD, “.com.” These slight alterations do little if anything to reduce the confusingly similarity between the name and the mark, and the Panel believes that most Internet users would confuse the two as to source and ownership. See Moen Incorporated v. Hu Xian Wang, WIPO Case No. D2008-1815 (finding the disputed domain name, <xmoen.com>, to be confusingly similar to the trademark, MOEN); Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (finding the disputed domain name, <efitnesswarehouse.com>, to be confusingly similar to the service mark, FITNESS WAREHOUSE); and Americor Mortgage, Inc. v. Robert D. Bowman, NAF Case No. FA93548 (In finding <zaploan.com> to be identical to ZAPLOAN, the panel opined that “[t]he addition of a generic top-level domain name does not create a distinct mark capable of overcoming a claim of identical or confusing similarity.”)
Accordingly, the Panel finds that the Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Policy paragraph 4(a)(ii) places upon the Complainant the onus of proving that the Respondent has no rights or legitimate interests in the disputed domain name. However, the overwhelming majority of prior panels have decided that, due to the difficulty in proving a negative proposition where most of the evidence would be in a respondent's possession, a complainant must make only a prima facie case to transfer the burden of producing evidence to the respondent. See for example AOL LLC v. Jordan Gerberg, NAF Case No. FA780200 (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); and Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (“once the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interest in the domain name at issue.”).
In this case, the Complainant's presentation of trademark evidence and its implied assertion that it has not licensed those rights to the Respondent satisfy the minimal requirements necessary to sustain a prima facie case as to this issue.
In rebuttal, the Respondent contends that it has such rights and legitimate interests because it is a business partner of a Swedish company called the Mirabella Education Team, which owns and operates beauty salons in Sweden. Such a defense relies implicitly upon paragraph 4(c)(ii) of the Policy, which states that the Respondent may establish rights and legitimate interests in a disputed domain name if “the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights.” The Panel believes that the overall intent of the Policy is well served by application of this paragraph in circumstances where a respondent is in a legitimate business partnership with a company that has been commonly known by the disputed domain name the claim asserted by the Respondent in this case.
Furthermore, prior UDRP decisions make it plain that correspondence between the names need not be exact for this paragraph to come into play, so that the distinction between “Mirabella” and “iMirabella” does not reduce the commonality between said partner's company name and the disputed domain name. See W. & G. Foyle Limited v. Robert G. Foyle, WIPO Case No. D2002-0039 (“…the Respondent has a legitimate interest in the Domain Name <foyles.biz> due to the fact that it is the possessive form [emphasis added] of his surname”); and Ken's Foods Inc. v. kens.com, WIPO Case No. D2005-0721 (finding that a respondent with the first name, Ken, could successfully claim rights and legitimate interests in the disputed domain name, <kens.com>, pursuant to Policy paragraph 4(c)(ii)). Here, the Panel notes that the letter “I” is a Swedish preposition that may be translated as “at” in English, thus “i Miribella” may be translated as “at Mirabella”.
To back its claim under paragraph 4(c)(ii) of the Policy, the Respondent has furnished the Panel with photographs that show clearly the signage “Mirabella” over the window of a store or salon front (see Response Exhibit 1). In addition, the Respondent has also included copies of web pages that reference and support the existence of the Mirabella Education Team. While the Panel might have preferred evidence in the form of legal documentation attesting to the partnership, the Respondent's submission is “concrete” and credible evidence that corroborates the Respondent's contention.
Having presented the evidence above, the Respondent has shifted the burden of proof on this issue back to the Complainant. However, in facing the re-imposition of this burden, the Complainant fails to provide any evidence to sustain its mere assertion that the Respondent is not commonly known by the disputed domain name.
Moreover, the Complaint contains copies of web pages located by the Respondent at the disputed domain name (Complaint Annex 4), which display a “Mirabella” label that mirrors the distinctive style of the signage on the store front referred to above. In both cases, the bulk of the lettering (i.e., “irabella”) is black in an uppercase block-style, while the initial capital “M” is red and in the same scripted styling, its tail sweeping under the rest of the black lettering in exactly the same manner. The Panel does not believe this precise duplication occurred at random, meaning that the Complainant's own submission bolsters the Respondent's claim that it is associated with the store front pictured in the Response. As a result, the Respondent's contention of rights and legitimate interests in the disputed domain name is made even stronger by the Complainant's own submissions.
In view of the analysis above, the Panel finds that the Complainant has failed to sustain its burden to prove that the Respondent has no rights or legitimate interests in the disputed domain name.
As the Complainant did not prevail with respect to the preceding element, which is required under the Policy for success in this proceeding, the Panel does not need to render an opinion as to whether the disputed domain name was registered and is being used in bad faith; the Panel merely notes that the domain name registration predates the Complainant's trademark registration. (See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 3.1 “Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right.”
For all the foregoing reasons, the Complaint is denied.
Dennis A. Foster
Dated: May 4, 2009