WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E. Tjellesen ApS (“Tjellesen”) v. Gosh Cosmetics Americas
Case No. D2011-0068
1. The Parties
The Complainant is E. Tjellesen ApS (“Tjellesen”) of Lynge, Denmark, represented by Ladas & Parry, United States of America.
The Respondent is Gosh Cosmetics Americas of Miami, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain names <goshamericas.com> and <goshcosmetics.com> are registered with Network Solutions, LLC. They are referred to in this decision as the "Domain Names".
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2011. On January 13, 2011, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Names. On January 13, 2011, Network Solutions, LLC 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 January 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2011.
The Center appointed Nick J. Gardner as the sole panelist in this matter on February 16, 2011. 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 Complainant produces cosmetics under the GOSH brand. It refers to a range of cosmetics, bath & body, and fragrance products produced by the Complainant. The GOSH Brand of cosmetics has been sold for over 25 years and is currently selling in over 66 countries throughout the world.
The Complainant is the owner of numerous worldwide trademark registrations for the GOSH mark. These registrations for the trademark GOSH include Danish Trademark Registration No. VR 1977 01312, which issued on April 1, 1977; Danish Trademark Registration No. VR 1986 01160, which issued on May 16, 1986; and United States Trademark Registration No. 1156907, which issued on June 9, 1981.
The Respondent to these proceedings is an entity identified as "Gosh Cosmetics Americas" with an address of 2220 NW 102 PL, Miami, FL 33172, USA. The Complainant has provided details of what it says is its distribution agreement for the USA. This is a single page letter dated July 23, 1999 which appears to appoint as "exclusive distributor" for the USA for the GOSH range, an entity described as "Dream Perfumes" with an address of 2220 NW 102 PL, Miami, FL 33172, USA. The Complainant says the Respondent and this entity are one and the same. It also says this distribution agreement has expired (the agreement itself is not expressed to be for any particular period of time, nor does it contain expiry or termination provisions).
Evidence filed by the Complainant shows that an entity identified as Dream Perfumes, Corp also does business from the same address and that its publicity material indicates it also does business as "Gosh Cosmetics Americas".
The Respondent registered the <goshcosmetics.com> domain name on October 26, 2001 and the <goshamericas.com> domain name on July 18, 2006, in both cases well after Complainant’s registration and use of the GOSH trademark in connection with its cosmetics business. The “www.goshcosmetics.com” website includes links to “Europe”, “Asia”, “South America”, “North America”, “Caribbean”, and “Others”. The links to “Europe”, “Asia”, and “Others” redirect Internet users to the Complainant’s official website, “www.gosh.dk". The remaining links, “South America”, “North America”, and “Caribbean” redirects to the Respondent's website at “www.goshamericas.com”. That web site offers for sale GOSH branded cosmetics and includes a page containing a profile on the GOSH Brand, which appears to be an “official” profile and a link to a Facebook page created by the Respondent.
The Complainant provides evidence of email correspondence between the Complainant and the Respondent (specific individuals with e mail addresses at the <goshcosmetics.com> domain name) for many years (dating back to 2003) in which the Complainant has been seeking a transfer of at least the <goshcosmetics.com> domain name to itself. The Respondent appears to have resisted these requests on the basis that it registered the domain name and a gTLD ".com" was a natural name for a United States focused site, which as the United States distributor it should keep. The Complainant has not accepted that is the case and although it continued to complain the issue does not ever appear to have been resolved between the parties - the status quo prevailed for so long as the Respondent remained the United States distributor.
Correspondence was sent by lawyers acting for the Complainant in 2010 requesting return of the Domain Names. That correspondence refers to the Respondent's distribution agreement having come to an end at the end of 2009. It does not appear to have been replied to.
In the course of the present proceedings the Center received email correspondence on February 7, 2011 (the due date for the Response) from the law firm of Brad and Cassell in Miami indicating it represented the Respondent and asking for an "official copy of the Complaint". That firm in answer to a request from the Center subsequently provided email confirmation from the Respondent confirming that it was the Respondent's counsel. It was subsequently copied in on an email from the Respondent which replied to the Notice of Default which was issued by the Center on February 9, 2010 (no response having been filed). Neither Blake and Cassell nor the Respondent (so far as the Panel is aware) took any further steps in these proceedings.
5. Parties’ Contentions
The Complainant's contentions are set out in some detail but can be summarised as follows.
It owns the GOSH mark in respect of cosmetics.
The <goshcosmetics.com> and <goshamericas.com> domain names incorporate the GOSH mark in its entirety and append generic and directly related terms thereto.
The Respondent registered the Domain Names, domain names confusingly similar to Complainant’s GOSH trademark, and is using the Domain Names to pass itself off as the Complainant when it is not authorized to do so and when the distributorship between the Complainant and the Respondent was terminated as of December 31, 2009.
The Respondent is using the Domain Names to divert Internet traffic to websites through which the Respondent attempts to pass itself off as the Complainant and claims to sell GOSH Brand cosmetics.
The Respondent’s former status as an exclusive distributor for the Complainant in the United States does not constitute and/or evidence rights to or a legitimate interest in the Offending Domains after termination of the distributorship.
The Respondent registered the <goshcosmetics.com> and <goshamericas.com> Domain Names during its tenure as the exclusive distributor for the Complainant in the United States The Respondent was not authorized to register the Domain Names, and the Complainant sought transfer of the Domain Names numerous times. After termination of the distributorship, the Complainant sent two cease-and-desist letters to the Respondent demanding transfer of the Domain Names. Nonetheless, the Respondent continued to hold, renew, and use the Domain Names. In fact, the Respondent used the Domain Names to pass itself off as the Complainant without the Complainant’s authorization. The Respondent’s actions evidence of bad faith use and registration of the Domain Names.
The Respondent did not reply to the Complaint.
6. Discussion and Findings
In reaching its conclusions the Panel has regard to the fact that the Respondent appears to have instructed legal counsel to represent it but has then, for whatever reason, not filed any Response.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(1) The Domain Names are identical with 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 Domain Name; and
(3) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark GOSH. Although no details have been provided as to turnover or sales figures the GOSH brand is clearly marketed on an international basis and the Complainant has registered trade mark rights.
The Domain Names are confusingly similar to the GOSH trade mark. UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here "cosmetics" and "americas") to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
Accordingly the Panel finds that the Domain Names are confusingly similar to the trade mark. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Domain Names. None of these are directly relevant to the present facts.
On the balance of evidence before the Panel, the Panel concludes that the legal entity that is the Respondent is most likely a company named Dream Perfumes, Corp which trades as Gosh Cosmetics Americas. In all the circumstances the Panel concludes that this entity had no independent rights or legitimate interest in either of the Domain Names outside the terms of its distribution agreement with the Complainant. That agreement, in the form provided to the Panel, is extremely short and is silent as to almost all terms normally to be found in such an agreement, including as to the extent to which the distributor is allowed to use the relevant trade marks of the supplier.
Absent any express provision in such agreement, and noting the failure of the Respondent to provide a Response (despite being represented by counsel), the Panel concludes it was unlikely to be the parties intention to allow the Respondent simply to adopt the Complainant's brand and to in effect hold itself out as being the Complainant. The Panel is reinforced in this view by the filed evidence which shows that since at least 2003 the Complainant has been objecting to this conduct by the Respondent and seeking transfer of at least the <goshcosmetics.com> domain name. Quite why it was prepared to allow this situation to continue for so long is unclear but it seems likely that the benefits it received from the distribution agreement, whilst in place, outweighed its dissatisfaction with the way in which at least the <goshcosmetics.com> domain name had been registered. In any event the evidence establishes the distribution agreement has now expired.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
On the evidence before the Panel the Respondent's distribution agreement with the Complainant has come to an end. In those circumstances it is clear to the Panel that the continued use of the Domain Names is in bad faith – each is being used to provide web sites which appear to be the "official" sites of the owner of the GOSH brand and which offer for sale GOSH cosmetics. Such conduct clearly falls within paragraph 4(b)(iv) of the Policy: "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".
The more difficult question that falls to be determined is whether the Respondent's registration of the Domain Names was in bad faith, given that this occurred during the period when it was the Complainant's distributor. This is not a straightforward question. Some previous panels have held that this situation can retrospectively cause the registration to be treated as having been made in bad faith – see UVA Solar GmbH & Co. K.G. v. Mads Kragh, WIPO Case No. D2001-0373; R&M Italia SpA, Tycon Technoglass Srl v. EnQuip Technologies Group, Inc. WIPO Case No. D2007-1477, and Exel Oyj v. KH Trading, WIPO Case No. D2004-0433. However other panels have found the reverse – see for example Urbani Tartufi s.n.c. v. Urbani U.S.A. WIPO Case No. D2003-0090; Kronopol Sp. z o.o v. Lamwood Products (1990) Limited, Levana Schwartz, WIPO Case No. D2007-1596.
Whilst these cases inevitably to some extent turn on their individual facts the Panel finds it difficult to accept that there is any general principle that a registration which was made perfectly bona fide by a distributor and with the concurrence of both parties, can retrospectively be found to have been made in bad faith when a distribution agreement comes to an end. That is not however what has happened in the present case. On the rather limited evidence before the Panel it would seem the Respondent registered these names without the agreement or permission of the Complainant, and the Complainant has since been objecting (at least in relation to the <goshcosmetics.com> domain name). The Respondent registered the <goshamericas.com> domain name when it must have known the Complainant had objected to the <goshcosmetices.com> domain name and there is no evidence it sought (or had) the Complainant's consent. Some of the evidence in terms of the email correspondence the Complainant has provided indicates that the detail of exactly what happened, and in what circumstances, may be in dispute. However the Panel notes the Respondent has failed to file a Response despite being represented by counsel, and has therefore not set out any positive case disputing the Complainant's account. The Panel therefore accepts that in this case the Domain Names were filed without the Complainant's knowledge or consent.
As indicated above there is no evidence that the distribution agreement allowed the Respondent to do this. The Panel concludes that a distributor would not normally expect to be allowed to register a domain name so closely aligned to its supplier's brand, at least absent express terms having been agreed permitting it to do so. No evidence of any such terms has been provided. The Complainant has provided evidence which shows that since 2003 it has been objecting to the registration of the <goshcosmetics.com> domain name. The Respondent has been given an opportunity to explain its conduct, and as appears above despite being represented by counsel has not filed any Response. In these circumstances the Panel concludes that on the balance of probability the registration of the Domain Names was also effected in bad faith in that the Respondent knew it had no independent right to register these in its own name.
The Panel finds that the Domain Names have been registered and used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Names, <goshamericas.com> and <goshcosmetics.com> be transferred to the Complainant.
Nick J. Gardner
Dated: March 2, 2011