The Complainant is The Elizabeth Taylor Cosmetics Company of New York, United States of America, represented by Bricker & Eckler LLP, United States of America.
The Respondent is Yong Huang, Huizhoushi of Guangdong Province, People' Republic of China.
The disputed domain name <elizabtaylor.com> (the “Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2009. On July 9, 2009, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On July 10, 2009, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 14, 2009, the Center transmitted an email to the parties in Chinese and English concerning the language of proceeding. On July 22, 2009, the Complainant submitted a request that English be the language of proceeding. The Respondent did not comment on the language of proceeding by the due date. The Center verified that 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 July 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 17, 2009.
The Center appointed Kar Liang Soh as the sole panelist in this matter on August 21, 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.
Elizabeth Taylor is a successful American actress who has won many Academy Awards including for best actress from 1957 to 1960, and 1966. She is a Hollywood icon of style, beauty and glamour. Elizabeth Taylor also helped to start the American Foundation for AIDS Research which has raised over $50 million by 1999 to fight the disease.
The Complainant is the assignee of all the rights of Elizabeth Taylor in respect of the use of her name and the trade mark ELIZABETH TAYLOR on perfumes and beauty products. The Complainant, through its exclusive licensee, Elizabeth Arden, Inc, has used the trade mark ELIZABETH TAYLOR since at least as early as 1987. Global sales of cosmetics under the trade mark ELIZABETH TAYLOR annually exceed $100 million. Sales for the last 8 years have exceeded $800 million. Elizabeth Arden, Inc. has spent over $100 million on advertising and promoting the trade mark ELIZABETH TAYLOR in the last 5 years.
The Complainant owns many trade mark registrations incorporating the words ELIZABETH TAYLOR for perfume and cosmetics including the following US registrations:
1,827,152 ELIZABETH TAYLOR March 22, 1994
1,537,104 ELIZABETH TAYLOR'S PASSION May 2, 1989
3,018,407 ELIZABETH TAYLOR'S GARDENIA November 22, 2005
2,162,334 ELIZABETH TAYLOR BLACK PEARLS June 2, 1998
2,917,703 ELIZABETH TAYLOR LUXURY LIPSTICK January 11, 2005
The Complainant uses the Internet to promote its products under the trade mark ELIZABETH TAYLOR (eg, at the website at “www.elizabethtaylorbeauty.com”).
The Registrar was unable to confirm when the Disputed Domain Name was registered by the Respondent. However, the Complainant WHOIS search indicates that the Disputed Domain Name was registered on April 18, 2007.
On April 21, 2009, the Complainant noted that the website resolved by the Disputed Domain Name was in English and included copyright notices in the name of Digasun Corporation USA, Inc of 3389 Sheridan Street, Hollywood, Florida 33021 (“Digasun”). The website also included references to products which compete with the Complainant's products but which was also associated itself with “Elizabeth Taylor”, “伊丽莎白· 泰勒” (Elizabeth Taylor in Chinese) and “Elizabeth Taylor R&D Center”.
The content of the website resolved by the Disputed Domain Name has since changed to a Chinese website. A printout of the changed website was not included with the Complaint. The Panel took the opportunity to visit the website and noted that it is currently a Chinese website offering a range of cosmetic products under the name ELIZAB TAYLOR and 伊丽莎白·泰勒. Digasun is identified as the contact. The webpage entitled “Company Introduction” includes a reference purporting cooperation with an American cosmetic brand “Elizab Taylor”. It also appears to provide facilities available only to registered members.
The Complainant believes that Digasun and the Respondent are related. The Complainant has previously succeeded in opposing China trade mark application nos 3459705 and 3459706 filed by Digasun for “Elizabeth taylor”. The English translation of the decisions of the China Trademark Office dated April 8, 2009 provided with the Complaint (the decision in Chinese was not provided) state:
“Elizabeth Taylor' is a famous international movie star and has a worldwide high reputation. The opposed party has infringed the opponent's prior right in her name by applying trademark registration for ‘Elizabeth Taylor”
Digasun continues to hold the following trade mark applications/registrations in China which the Complainant has indicated a strong desire to oppose:
3440955 25 Elizabeth taylor Registered
3440956 25 伊丽莎白·泰勒 Registered
3459704 3 伊丽莎白·泰勒 Registered
3459727 3 Elizabeth taylor Opposed
4409305 3 Elizab • taylor Registered
4803991 3 Elizb taylor Approved
5175312 24 伊丽莎白·泰勒 Pending
5795298 3 ELZB.Taylor Pending
5795299 18 ELZB.Taylor Pending
According to the online trade mark database of the China Trademark Office, the trade mark registration 4409305 was filed on December 10, 2004 and registered on April 7, 2008.
The Complainant contends that:
(1) The Disputed Domain Name includes the well-known trade mark ELIZABETH TAYLOR in its entirety and is thus confusingly similar to the trade mark ELIZABETH TAYLOR;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not a licensee of, or otherwise affiliated with the Complainant. The Respondent's name and Digasun's name do not include the words “Elizab Taylor”. The Respondent's use of the Disputed Domain Name is not a legitimate use and the Respondent has no intention of making any legitimate use; and
(3) The Respondent registered and is using the Disputed Domain Name in bad faith. The Respondent is capitalizing on the well-known trade mark ELIZABETH TAYLOR by profiting from resulting confused traffic that gets misdirected to the website resolved by Disputed Domain Name. The Respondent knew of the Complainant's superior and prior rights but is selling competing products while its alta ego Digasun is trying to pirate many variation so the trade mark ELIZABETH TAYLOR in China.
The Respondent did not reply to the Complainant's contentions.
The Registration Agreement is in Chinese and paragraph 11(a) of the Rules provides that Chinese shall be the default language of the proceedings. However, the Panel may determine otherwise having regard to the circumstances, particularly to ensure fairness to the Parties and to keep proceedings cost-efficient and expeditious (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).
The Complainant submits that English should be the language of the proceeding.
This Panel has noted the following circumstances:
(1) The website resolved by the Disputed Domain Name was in English although it has since changed to Chinese;
(2) The website and correspondingly the Respondent is associated with Digasun, a Florida company which, being American, must in all likelihood be conversant in English;
(3) All communications from the Centers to the Parties have been in Chinese and in English and the Respondent must have known the full import this proceeding; and
(3) By choosing not to file a Response, the Respondent has shown no interest in the proceeding and it will serve no useful purpose in insisting on the Complainant translating all its papers into Chinese.
As such, it is not foreseeable that the Respondent will be prejudiced should English be adopted as the language of the proceeding. Therefore, the Panel holds that English shall be the language of the proceeding in accordance with paragraph 11(a) of the Rules.
To succeed in this proceeding, the Complainant must establish the following limbs of paragraph 4(a) of the Policy:
(1) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith.
There is no doubt that the trade mark ELIZABETH TAYLOR is a well-known trade mark in which the Complainant has rights. This Panel also accepts the China Trademark Office's finding that the Complainant has trade mark rights in China prior to China trade mark application nos 3459705 and 3459706.
Unfortunately, the Complainant has not provided any information of their trade mark registrations in China. It would have been very useful to understand the scope of the Complainant's trade mark registrations in China, considering that the Respondent not only resides in China but also continue to own other relevant trade mark registrations in China, in particular, trade mark application no 4409305 for “Elizab • taylor”.
The Panel does not accept the Complainant's argument that the Disputed Domain Name includes the trade mark in its entirety. The Disputed Domain Name relates to the combination of letters “elizabtaylor”. In comparison with the trade mark ELIZABETH TAYLOR, it omits the letters “eth” after “elizab”. Therefore, the Disputed Domain Name, being shorter than the trade mark ELIZABETH TAYLOR cannot possibly include it in its entirety.
Be that as it may, the question to address is whether the Disputed Domain Name is identical (which it is not) or confusingly similar to the ELIZABETH TAYLOR trade mark. The letters “eth” form the tail end of the word “elizabeth”. For a word with 5 syllables, the omission of the final syllable may potentially not affect the overall impression of the word. Further, the words “elizabeth taylor” in its entirety reads as a string of 7 syllables. The omission of “eth” from the middle could potentially go unnoticed.
Having regard to the manner in which the Respondent appears to be using the words “elizab taylor”, “elizabeth taylor” and伊丽莎白·泰勒(ie, “elizabeth taylor” in Chinese) on the earlier English version of the website resolved by the Disputed Domain Name, one cannot help but be suspicious of the manner in which the Respondent had associated the use of these elements with the Disputed Domain Name.
On a direct comparison of the Disputed Domain Name and the Complainant's trade mark ELIZABETH TAYLOR, this Panel is of the view that the Disputed Domain Name is confusingly similar to the trade mark ELIZABETH TAYLOR and the first limb of paragraph 4(a) is made out.
The Complainant's serious allegations against the Respondent which the Respondent has failed to respond to raises serious suspicions regarding the Respondent's rights or legitimate interests in the Disputed Domain Name. However, this Panel cannot ignore the subsisting China trade mark registrations of the Digasun, particularly trade mark no 4409305 for “Elizab • taylor” which is virtually identical to the Disputed Domain Name.
It is acknowledged that the Complainant has successfully opposed 2 of Digasun's applications for ELIZABETH TAYLOR in China. It is also acknowledged that there is a reasonable possibility that Digasun's application no 3459727 and registration no 3440955 for ELIZABETH TAYLOR may similarly fail.
However, the trade mark registration no 4409305 for “Elizab • taylor” currently remains valid in China. It is also not identical to ELIZABETH TAYLOR. There is no evidence before this Panel to suggest that registration no 4409305 will suffer the same fate as application nos 3459727 and 3440955. Provided an authority of competent jurisdiction determines otherwise, the trade mark rights granted under China law to the words “Elizab • taylor” to Digasun pursuant to trade mark registration no 4409305 cannot be disregarded.
The Panel is mindful of earlier decisions which addressed the question of rights and legitimate interests in the context of a trade mark application/registration of the respondent which corresponded to the disputed domain name. These cases were helpfully analysed and distilled by the panel in BECA Inc. v. CanAm Health Source, Inc., WIPO Case No. D2004-0298 into the following non-exhaustive guidelines:
(i) The mere fact that a trade mark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the Policy. Where it was not for a legitimate or bona fide purpose but merely to bolster a domain name registration, it may be disregarded;
(ii) The chronology of events is important in determining whether a trade mark application or registration was merely to bolster the respondent's domain name registration. A trade mark application made subsequent to notice of a dispute or the domain name registration may indicate a lack of legitimate interest;
(iii) The respondent's knowledge and intention at the time of registering the disputed domain name is highly relevant, but knowledge of the complainant's rights does not, in itself, preclude the respondent from having a right or legitimate interest; and
(iv) The connection, or lack of it, between the respondent and the jurisdiction in which trade mark registration is sought may indicate whether the trademark application or registration is “legitimate.”
Therefore, where trade mark registration was obtained in a country completely unrelated to the respondent and/or the activities relating to the purported use of the disputed domain name, it was insufficient to justify a determination that the respondent had rights or legitimate interests (eg, in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, the respondent's activities in the United States of America were unrelated to the respondent's trade mark registration in Tunisia).
Similarly, where the respondent applied to register a trade mark only after having obtained the disputed domain name (eg, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com") or after having had a close working relationship with the complainant (eg, The Automobile Association Limited, Automobile Association Developments Limited v. Fish4travel, Inc, WIPO Case No. D2009-0401), or after receiving some protest from the complainant (eg ISL Marketing AG, and the Union des Associations Européennes de Football v. The European Unique Resources Organisation 2000 B.V., WIPO Case No. D2000-0230), it was readily found that the trade mark application/registration could not support a claim by the respondent of rights or legitimate interests to the disputed domain name.
The present case does not fall within the facts of these earlier decisions. Digasun's trade mark registration 4409305 was applied for a few years before the Disputed Domain Name. The trade mark was registered 10 days before the Disputed Domain Name. The trade mark registration was in China, the Respondent's country.
Although the Complainant had successfully opposed Digasun's registrations 3459705 and 3459706 for “Elizabeth taylor”, the words “Elizab • taylor” are not the same. Regardless of whether “Elizabeth taylor” and “Elizab • taylor” is confusingly similar for the purposes of the UDRP, there is no evidence before this Panel to suggest that the Complainant had protested against the registration of trade mark registration 4409305 by Digasun or use of the words “ELIZAB TAYLOR” by Digasun and/or the Respondent prior to the registration of the Disputed Domain Name.
In the circumstances, by virtue of the limited facts available before this Panel, this Panel is unable to conclude at this juncture on the present record (suspicions aside) that the Respondent has no rights or legitimate interests. This Panel recognizes that it only has authority to rule on domain names within the strict confines of the Policy but has no authority to rule on the validity of China trade mark registration no 4409305. That authority is reserved to a court or administrative body having proper jurisdiction over the trade mark registration on the basis of applicable local laws. If the Complainant desires to invalidate a trade mark registration, it may seek redress via the proper channel.
Meanwhile, until and unless that happens, to rule otherwise may place this Panel in a legal conundrum vis-à-vis substantive local trade mark law(see BECA Inc. v. CanAm Health Source, Inc.; Cyrillus S.A .v. KRP Tekstil, WIPO Case No. D2001-0551).
For the purpose of this decision, it is not necessary to determine if Digasun and the Respondent are one and the same party in order for the Respondent to be imbued with the “benefit” of trade mark registration no 4409305. The evidence shows that Digasun and the Respondent are at least associated with each other in the use of the Disputed Domain Name. It is not unforeseeable that Digasun, being a registered trade mark owner, could have licensed or permitted the Respondent to use the words “Elizab • taylor” in the Disputed Domain Name.
It has been established by numerous panels that the use of a well-known mark as a domain name by a person unconnected to products identified by the well-known mark to attract Internet users to a website for commercial gain is opportunistic bad faith registration and use (eg, Educational Testing Service v. Mohamed Ahmed Aljarwan, WIPO Case No. D2008-1073; F Hoffmann-La Roche AG v. Anna Valdieri, WIPO Case No. D2007-0956).
The website resolved by the Disputed Domain Name (whether the earlier English version, or the current Chinese version) offers cosmetics for sale. The Complainant has already shown that the trade mark ELIZABETH TAYLOR is well-known. The Complainant has also shown that the Respondent had used the trade mark ELIZABETH TAYLOR on the earlier English version of the website without being a licensee or affiliate of the Complainant. Although the current Chinese version appears to be limited to the use of the words ELIZAB TAYLOR and the trade mark ELIZABETH TAYLOR does not appear, it does not negate the fact that the Respondent had used (and could resume use of) the trade mark ELIZABETH TAYLOR in association with the Disputed Domain Name.
The Respondent has chosen not to challenge these points. A reasonable presumption arises that the motive for the Respondent's registration and use of the Disputed Domain Name must be for commercial gain whether by attracting traffic or otherwise. Granted, the presumption could have been rebutted by the Respondent in the course of the proceeding but the Respondent has declined and/or ignored every opportunity provided by the proceeding to do so.
As such, there is arguably an unrebutted presumption of opportunistic bad faith use and registration of the Disputed Domain Name. However, as this Panel is unable to conclude on the present record that the Respondent's does not have rights or legitimate interests in the Disputed Domain Name, it is not necessary to consider this issue in further detail.
For all the foregoing reasons, the Complaint is regretfully denied. However the Panel wishes to highlight that the present decision is issued without prejudice to any future re-filed Complaint by the Complainant under the Policy in light of any materially relevant subsequent developments, such as any lapse or successful trade mark challenge to Digasun's Chinese trade mark registration 4409305, bearing in mind the considerations for allowing a re-filed Complaint (see e.g. Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490).
Kar Liang Soh
Dated: September 7, 2009