WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natura Cosméticos S/A, Indústria e Comércio de Cosméticos Natura Ltda. v. Pedro Andrade Santos
Case No. D2010-1690
1. The Parties
The Complainants are Natura Cosméticos S/A of São Paulo, Brazil; Indústria e Comércio de Cosméticos Natura Ltda. of São Paulo, Brazil, represented by Ricci Advogados Associados, Brazil.
The Respondent is Pedro Andrade Santos of Houston, Texas, United States of America, represented by Internet Lawyers USA, P.C, United States of America.
2. The Domain Name and Registrar
The disputed domain name <perfumenatura.com> ("Domain Name") is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2010. On October 7, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On October 11, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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” 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 October 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2010.
On November 3, 2010, the Respondent filed the Response with the Center. On November 4, 2010, the Center acknowledged receipt of this late Response and indicated that it would be up to the Panel’s discretion to decide whether to consider the late Response.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 11, 2010. 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. Preliminary Issues
This Complaint involves two Complainants: Natura Cosméticos S/A and Indústria e Comércio de Cosméticos Natura Ltda. Both Complainants own trade mark registrations relevant to the dispute.
The Respondent contends that the bringing of action by multiple complainants is in contravention of the Rules and the Policy, and that the accordingly the Complaint should be denied.
Many cases have discussed the issue of multiple complainants. The case of Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331, discussed the extent to which the Policy and the Rules deal with the issue of multiple complainants, as follows:
"Neither the Policy nor the Rules expressly provides for the consolidation of multiple complainants in a single complaint. While both the Policy and Rules use the term “complainant” throughout, the Policy and Rules do not expressly preclude multiple legal persons from falling within the term “complainant”."
It is clear from this case and from numerous other decisions that a complaint may be submitted by multiple related parties where there are common interests in the disputed domain name (See National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021; Mucos Emulsions, GmbH and marlyn Nutraceuticals, Inc. v. Esex.org and Kim Taeho, WIPO Case No. D2000-1513; Bettina Liano and Bettina Liano Pty Limited v. Khanh Kim Huynh, WIPO Case No. D2000-0891; and NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128).
The Panel accepts that it is appropriate for the Complaint to be filed by multiple complainants in the present case, as both Complainants have a common interest in the Domain Name and while the Complainants are separate legal entities, they are both engaged in common business. This is consistent with two previous administrative cases filed by the Complainant in respect of the NATURA mark, where filing of a single complaint by the same two complainants was allowed (See Natura Cosméticos S.A., Industria e Comércio de Cosméticos Natura Ltda. v. Belize Domain Whois Service Lt, WIPO Case No. D2007-1165; and Natura Cosméticos S/A and Indústria e Comércio de Cosméticos Natura Ltda. v. N/A, WIPO Case No. D2008-1128).
For the remainder of this decision, the Complainants shall be referred to as the "Complainant", unless otherwise indicated.
5. Factual Background
The Complainant comprises of two Brazilian companies which have been operating in the cosmetics industry for almost 40 years, selling cosmetics products (including perfumes) in Brazil and various other international markets (including Argentina, Peru, Bolivia, Chile, Colombia, Mexico, Venezuela and France). The Complainant markets its goods using the NATURA trade mark and each of the Complainants own trade mark registrations comprising of the word "natura" on its own and with additions in many jurisdictions throughout the world, including the United States of America. The Complainant has an extensive trade mark portfolio for NATURA and has widely used this mark (and variations thereof) on various cosmetics products.
The Respondent appears to be an individual resident of the United States of America. The Domain Name was previously registered on April 8, 2010 by Ricardo Euzebio Riberio ("Previous Registrant"). Upon becoming aware of the Domain Name, the Complainant sent a warning letter to the Previous Registrant requesting the cancellation of the Domain Name (as well as the <perfumesnatura.com> domain name, which is the subject of separate administrative proceedings filed by the Complainant). The Previous Registrant replied offering to sell the Domain Name for R$30,000 and offering to sell the <perfumesnatura.com> domain name for R$25,000. The Previous Registrant subsequently transferred the Domain Name to the Respondent.
6. Parties’ Contentions
The Complainant's contentions can be summarised as follows:
a) the Domain Name is confusingly similar to the Complainant’s NATURA trade mark and contains the word “perfume”, which is a description of the business activities of the Complainant;
b) the Complainants NATURA trade mark has been acknowledged by the Brazilian Patent and Trademark Office as being highly renowned and the Respondent should have known of the NATURA trade mark;
c) the Respondent has no rights or legitimate interests in respect of the Domain Name and is not involved in the perfume industry;
d) the Domain Name was registered and is being used in bad faith;
e) the Complainant sent a warning letter to the Previous Registrant of the Domain Name regarding the Domain Name and another domain name incorporating the Complainant’s NATURA trade mark (<perfumesnatura.com>). The Previous Registrant replied offering to sell the Domain Name to the Complainant for R$30,000 and offering to sell the <perfumesnatura.com> domain name for R$25,000. After receiving the Complainant’s warning letter, the Previous Registrant transferred the Domain Name to the Respondent; and
f) the Respondent intends to confuse the public into believing that the Domain Name was somehow associated with the Complainant.
The Respondent did not reply to the Complainant’s contentions within the specified time frame. Given that the Respondent submitted its response one day after the deadline, the Panel has decided to consider the Respondent's late response.
The Respondent's contentions can be summarised as follows:
a) the present case is not a clear case of “cybersquatting” and should not be decided according to the UDRP process;
b) the bringing of action by multiple complainants is in contravention of the Rules and the Policy and that the Complaint should be denied because of this deficiency in the Complaint;
c) the Complainant has not discharged its burden of proof in proving that the Respondent does not have a legitimate interest in the Domain Name;
d) the Complainant has not proven that the Respondent has registered and used the Domain Name in bad faith. The Respondent has only been the registrant of the Domain Name for a short period of time and the Complainant has not provided evidence of bad faith of the Respondent during this time.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the NATURA trade mark on the basis of the extensive international portfolio of trade mark registrations owned by the Complainant for NATURA.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case ”.com“ should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762).
The Domain Name incorporates the Complainant's NATURA mark in its entirety. The only difference between the Domain Name and the Complainant's NATURA mark is the inclusion of the word "perfume" as a description. It is well-established that in cases where the distinctive and prominent element of a disputed domain name is the complainant's mark and the only addition is a generic term that adds no distinctive element, such an addition does not negate the confusing similarity between the disputed domain name and the mark. See Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088.
The Panel finds that "natura" is the distinctive and prominent component of the Domain Name and the addition of the word "perfume" does nothing to distinguish it from the Complainant's trade marks. Given that the Complainant is in the business of manufacturing and selling cosmetics and perfumes, the "perfume" component of the Domain Name if anything serves to increase the likelihood that consumers will be misled into thinking that the Domain Name is somehow associated with the Complainant.
The Panel accordingly finds that the Domain Name is confusingly similar to the NATURA mark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that the evidence submitted by the Respondent is insufficient to show that the Respondent has any rights in any trade marks or service marks which are identical, similar or related to the Domain Name. Therefore, the Panel will assess the Respondent's rights in the Domain Name (or lack thereof) based on the Respondent's use of the Domain Name in accordance with the available record.
The Panel accepts that the Complainant has not authorised the Respondent to use the NATURA trade mark. The Panel further accepts that the Respondent has not become commonly known by the Domain Name.
Accordingly the only way for the Respondent to acquire rights or legitimate rights in the Domain Name for the purposes of 4(a)(ii) of the Policy would be through use of the Domain Name for legitimate noncommercial purposes or in connection with a bona fide offering of goods or services.
The Domain Name points to a parking website which features sponsored links and click-through advertising. The Panel assumes that the Respondent profits from the advertisement and promotion of these third party goods and services. The use of a domain name containing a well-known trade mark for the purpose of collecting referral fees from sponsored advertising links, has been consistently held not to be a legitimate offering of goods or services (See PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162; and Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437).
The Panel finds that there is insufficient evidence that the Respondent can assert a right or legitimate interest in the Domain Name. The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the disputed Domain Name.
C. Registered and Used in Bad Faith
The Respondent contends that the Complainant has not produced evidence that the Respondent "registered" and "used" the Domain Name in bad faith as required under paragraph 4(a)(iii) of the Policy.
There have been a number of cases in which "registration" was held to include subsequent acquisitions of a domain name (See BWR Resources Ltd v. Waitomo Adventures Ltd, WIPO Case No. D2000-0861 and Motorolla, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079), and the Panel takes this approach in the present case. The relevant question is therefore whether the Respondent acquired the Domain Name in bad faith.
The Panel accepts the Respondent's contention that the Complainant did not provide direct evidence of bad faith registration on behalf of the Respondent. However, the Panel notes that the following evidence was produced evidencing bad faith with respect to the original registration of the Domain Name by the Previous Registrant:
- The Complainant sent a warning letter to the Previous Registrant regarding the Domain Name and the <perfumesnatura.com> domain name after which time the Previous Registrant offered to sell the Domain Name to the Complainant for R$30,000 and offered to sell the <perfumesnatura.com> domain name for R$25,000.
- The Previous Registrant subsequently transferred the Domain Name to the Respondent.
- The Previous Registrant is the registrant of a large number of domain names, some of which incorporate famous brands.
In the case of Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406 (which involved similar fact scenario to the present case), it was held that despite there not being any evidence of bad faith on the part of the assignee of the domain name, in the absence of evidence to the contrary, the inference may be drawn that the domain name was registered by the present registrant with a similar intention to the original registrant. In that case it was stated that due to the confusing similarity between the disputed domain name and the complainant's mark and the degree of fame of the complainant's mark, it was difficult to believe that the respondent took transfer of the disputed domain name unaware of the complainant's mark and therefore it was held that the respondent acquired the domain name in bad faith (See also DFO, Inc. v. Christian Williams, WIPO Case No. D2000-0181 for similar findings). The Panel finds that the same factual scenario is present in this case and accordingly finds that the Respondent has acquired the Domain Name in bad faith.
Moreover, evidence of bad faith includes actual or constructive notice of a well known trade mark at the time of registration of a domain name by a respondent. See Samsonite Corp. v. Colony Holding, NAF Case No. FA 94313. The Complainant has trade mark registrations for the NATURA trade mark in the jurisdiction in which the Respondent is located, i.e. the United States. Considering this, and the fame of the NATURA mark, it is reasonable to infer that the Respondent was aware of the Complainant's rights in the NATURA trade mark.
In relation to whether the Respondent is using the Domain Name in bad faith, the Panel notes that the Domain Name points to a website which features sponsored links and click-through advertising. The Panel assumes that the Respondent profits from the advertisement and promotion of these third party goods and services. In any event, if one were to consider sponsored links as “inaction” on the part of the Respondent, the decision of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, makes it clear that the concept of "use in bad faith" in the corresponding paragraph 4(a)(iii) of the Policy is not limited to positive action, and that inaction is within the concept, i.e. inactivity by the Respondent may therefore amount to “the use of the domain name in bad faith'”.
In the circumstances, the Panel finds that there is no basis on which to infer that the Respondent has registered and used the Domain Name in any manner or for any purpose other than in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
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 <perfumenatura.com> be transferred to the Complainant.
Dated: November 25, 2010