World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Estee Lauder Cosmetics Ltd., Makeup Art Cosmetics Inc. v. Pingnan Shang aka Shang Pingnan, Ruijuan Wang aka Wang Ruijuan, mac makeup

Case No. D2011-0457

1. The Parties

The Complainant (1) is Estee Lauder Cosmetics Ltd. of Agincourt, Ontario, Canada; and the Complainant (2) is Makeup Art Cosmetics Inc. of New York, New York, United States of America (“the Complainants”), represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.

The Respondent (1) is Pingnan Shang aka Shang Pingnan of Hongkong, SAR of the People’s Republic of China; the Respondent (2) is mac makeup of Hongkong, SAR of the People’s Republic of China; and the Respondent (3) is Ruijuan Wang aka Wang Ruijuan of Shanghai, the People’s Republic of China (“the Respondents”).

2. The Domain Names and Registrars

The disputed domain names <macmakeupwhoiesale.com>, <macmakeupwholesaie.com>,

<mac-makeup-wholesale.com>, <macmake-upwholesale.com>, <mac-makeupwholesales.com>, and <macmakeup-wholesales.com> are registered with HiChina Zhicheng Technology Ltd. The disputed domain name <macmakeupwholesale.com> is registered with Xin Net Technology Corp. (Xin Net Technology Corp. and HiChina Zhicheng Technology Ltd., together the “Registrars” and the “Domain Names”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2011. On March 10, 2011, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On March 11, 2011, the Registrars transmitted by email to the Center there verification responses respectively confirming that the Respondent is listed as the registrant and providing the contact details.

On March 14, 2011, the Center transmitted by email to the parties in both Chinese and English regarding the language of the proceeding. On March 14, 2011, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified 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 Respondents of the Complaint, and the proceedings commenced on March 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2011. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on April 11, 2011.

The Center appointed Yijun Tian as the sole panelist in this matter on April 28, 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

A. The Complainant

The Complainant (1), Estee Lauder Cosmetics Ltd (ELC), is a company incorporated in Ontario, Canada, and the Complainant (2), Makeup Art Cosmetics Inc (MAC), is a company incorporated in New York, United States of America. Complainant (2) (MAC) is the exclusive licensee of Complainant (1) (ELC) and has the sole right to use the MAC trademarks in the United States. MAC and its affiliated companies (collectively, “MAC”), is one of the world’s leading cosmetics companies.

The Complainants own approximately 280 trademark registrations for MAC marks around the world. The United States trademarks that include MAC are in the name of ELC and the international trademarks that include the name MAC are in the name of MAC, including China. (Exhibit H and Exhibit I to the Complaint), all of which issued before any of the Domain Names were registered.

B. The Respondent

The Respondent (1), Pingnan Shang, registered the disputed domain names <macmakeupwholesaie.com> on June 21, 2010 and <macmakeupwhoiesale.com> on June 29, 2010, with registrant email “[…]@hotmail.com”. (Exhibit A to the Complaint).

The Respondent (1), Pingnan Shang, also registered the disputed domain name <macmakeupwholesale.com> on May 7, 2010, with registrant email “[…]@hotmail.com” which is identical to the registrant email address provided for the disputed domain names listed above. (Exhibit B to the Complaint).

The Respondent (2), mac makeup, registered the disputed domain names <mac-makeupwholesales.com>, <mac-makeup-wholesale.com> and <macmakeup-wholesales.com> on November 9, 2010, with registrant email “[…]@hotmail.com” which is identical to the email address provided for the disputed domain names listed above. (Exhibit C to the Complaint). The Complainants claimed that this “make[s] it clear that the domain name is owned or controlled by Pingnan Shang” – The Respondent (1). (Exhibit C to the Complaint and the Complaint).

The Respondent (3), Ruijuan Wang, registered the disputed domain name <macmake-upwholesale.com> on October 6, 2010, with registrant email “[…]@hotmail.com”, which is the same as for all of the other identified disputed domain names listed above (Exhibit D to the Complaint).

In other words, each of these Domain Names is registered to an individual or entity using the same email address “[…]@hotmail.com”.

5. Parties’ Contentions

A. Complainant

(i) The Complainants have rights in the MAC mark;

- The Complainants have used MAC in and as part of a trademark since 1985; and it used the mark on beauty products sold throughout the world including in China and Hong Kong, SAR of China.

- The Complainants owned website “www.maccosmetics.com” since 2000.

- The Complainants owned 280 trademark registrations; and the earliest of which was issued in 1986 including its 8 registrations in China and 4 registrations in Hong Kong, SAR of China.

(ii) The Domain Names are Identical or Confusingly Similar to the MAC mark

- Each of the Domain Names incorporates, in its entirety, the Complainants’ registered MAC trademark.

- Where a domain name incorporates complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy.

- The generic terms “makeup,” “wholesale”, “wholesales”, “whoiesale” and “wholesaie” do nothing to distinguish the Domain Names from the Complainants’ mark as these terms clearly relate to or can be about the Complainants.

- The functioning websites at five of the Domain Names clearly display the Complainants’ MAC trademark and sell counterfeit versions of the Complainants’ goods. (Compare Exhibit E to Exhibit J to the Complaint).

- Consumers are likely to be left with the false impression that the Respondents are authorized to sell the Complainants’ merchandise, and/or that the merchandise being sold by the Respondents is authentic and authorized.

(iii) The Respondents have no Rights or Legitimate Interest in the Domain Names

- Since the Complainants’ adoption and extensive use of the MAC mark predates the registration of the Domain Names, the burden is on the Respondents to establish its rights or legitimate interests in the Domain Names.

- The Respondents are exhibiting bad faith by failing to operate active websites at the <mac-makeupwholesales.com> and <macmakeup-wholesales.com>.

- The Complainants first used the MAC marks long before the Respondents registered the Domain Names in 2010.

- The inactive websites at the <mac-makeupwholesales.com> and <macmakeup-wholesales.com> give no indication that Respondent has any intention of utilizing the disputed domain names for a legitimate purpose; and these two disputed domain names are clearly associated exclusively with the Complainants.

- Any use of these Domain Names would falsely suggest a connection with the Complainants and the sole purpose of any use of these Domain Names would be to commercially benefit from the Complainants’ rights and the goodwill associated with Complainants’ MAC marks.

- The Respondents were given an opportunity to explain its basis for using the MAC mark in the Domain Names when its website at “www.macmakeupwholesale.com” was first shut down by its ISP in response to the Complainants’ objection.

- There exists no relationship between the Complainants and the Respondents that would give rise to any license, permission or authorization by which the Respondents could own or use any of the Domain Names all of which incorporate in whole the Complainants' registered MAC mark, and the Complainants have never authorized the Respondents to use the MAC mark, or any mark confusingly similar thereto, as a domain name or for any other purpose.

- There is no evidence to suggest that the Respondents have been or are commonly known by the Domain Names.

- The Respondents’ use of the MAC mark in connection with counterfeit products cannot constitute a bona fide use of the mark under paragraph 4(c)(i) of the Policy.

- Neither the Domain Names themselves nor the associated websites disclose the lack of any relationship between the Complainants and the Respondents.

- The Domain Names each suggests that the Complainants are or may be authorizing or sponsoring a website associated with the Domain Names when that is not accurate. The Respondents clearly are aware of the fame of the MAC mark used in the Domain Names and displayed at their related websites.

(iv) The Respondents Registered and Used the Domain Names in Bad Faith

- There clearly is bad faith where, as here, the Respondents are using Domain Names incorporating the Complainants’ trademark to sell unauthorized or non-genuine products and to falsely suggest a connection with the Complainants.

- For the disputed domain names <mac-makeupwholesales.com> and <macmakeup-wholesales.com>, the Respondents have provided no evidence whatsoever of any actual or contemplated good faith use, which in and of itself is evidence of bad faith use of the disputed domain names.

- Given that the Respondents have never been authorized by the Complainants to use the MAC mark, the very fact that the Respondents have registered the Domain Names establishes bad faith use and registration.

- In this case the Respondents have gone to lengths to fuel consumer confusion making prominent use of the Complainants’ MAC mark and product images.

- The only reason for the Respondents’ use of the Complainants’ Mark and products as the main source identifying and attention grabbing symbols on its website is to intentionally confuse consumers and to trade on the Complainants’ rights and reputation.

- After having its site at “www.macmakeupwholesale.com” removed by the Respondents’ original ISP for selling counterfeit goods, the Respondents re-posted the website in its entirety at another ISP and continues to use the Complainants’ marks despite the Complainants’ objection, further evidencing the Respondents’ bad faith use of the Domain Names.

- The Respondents’ use of false contact information when registering the Domain Names, as shown by the incomplete and fake details listed in each of the WhoIs reports, is also evidence of bad faith.

B. Respondent

The Respondents did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the registration agreement for the Domains Names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between the Complainants and the Respondents to the effect that the language of the proceeding should be English. The Complainants filed initially its Complaint in English, and have requested that English be the language of the proceeding for the following reasons:

(1) The Domain Names are in the English language (“makeup,” “wholesale”, “wholesales”, “whoiesale” and “wholesaie” are each generic English words or typosquatted versions of generic English words).

(2) The contents of the websites associated with the Domain Names are entirely in English.

(3) The products are advertised to and can be shipped to the Untied States.

(4) Prices for the products sold are in United States dollars. (See Exhibit U to the Complaint).

(5) These circumstances present strong evidence that the Respondents are adept in the English language and warrant that the proceedings be conducted in English.

The Respondents did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving Domains Names. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0.”) further states: “ in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that the Complainants are English companies, incorporated in Canada and the United States, and the Complainants will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the websites at the Domain Names include English phrases (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, the Respondents appear to be Chinese individuals and are thus presumably not native English speakers, but the Panel finds that persuasive evidence in the present proceeding to suggest that the Respondents have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by the Complainants: (a) The Domain Names <macmakeupwhoiesale.com>, <macmakeupwholesaie.com>, <mac-makeup-wholesale.com>, <macmake-upwholesale.com>, <mac-makeupwholesales.com>, <macmakeup-wholesales.com> and <macmakeupwholesale.com> have been registered in English, rather than Chinese script; (b) Five of seven Domain Names resolve to five virtually identical English based website and the Respondents are selling counterfeit MAC products through these websites; (c) The websites appears to have been directed to users worldwide rather than solely Chinese speakers; (d) The products are advertised to and can be shipped to the United States; (e) Prices for the products sold are in United States dollars; (f) the Center has notified the Respondents of the proceedings in both Chinese and English; and (f) the Center informed the Respondents that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainants must prove each of the following three elements to obtain an order that the Domain Names should be cancelled or transferred:

(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) The Respondents have no rights or legitimate interests in respect of the Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

On the basis of the evidence introduced by the Complainants and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainants have rights in the trademark MAC and M.A.C (the “Trade Mark”) acquired through registration. The Trade Mark has been registered worldwide including in China, and enjoys a widespread reputation in the cosmetics industry (Exhibits H-J to the Complaint).

The Domain Names <macmakeupwhoiesale.com>, <macmakeupwholesaie.com>, <mac-makeup-wholesale.com>, <macmake-upwholesale.com>, <mac-makeupwholesales.com>, <macmakeup-wholesales.com> and <macmakeupwholesale.com> comprise the Trade Mark in its entirety. The Domain Names only differ from the Complainants’ trademark by the addition of the generic terms “makeup”, “wholesale”, “wholesales”, “whoiesale” or “wholesaie”, and the addition of one or two hyphens in some disputed domain names.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark 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). Further in Makeup Art Cosmetics Inc. v. Zhihua, WIPO Case No. D2010-0868, three domain names all beginning with the MAC mark and followed by either descriptive or generic terms related to the Complainant's cosmetics business create domain names that are confusingly similar to the Complainant's mark.)

Generally a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Case No. 0500065). In a previous case involving the Complainants’ parent company in respect of the domain name <lorealchina.net>, the panel found similarly that the addition of the word “china” to the word “loreal” does not serve to distinguish it from the complainant’s L’OREAL marks (L’Oreal v. Liao Quanyong, WIPO Case No. D2007-1552).

Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the Domain names and the Trade Mark.

The Panel therefore holds that the Complainants fulfil the first condition of paragraph 4(a) of the Policy.

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 Respondents have rights or legitimate interests in the Domain Names:

(i) use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services;

(ii) the fact that the Respondents have commonly been known by the Domain Names; and

(iii) legitimate noncommercial or fair use of the Domain Names.

The overall burden of proof on this element rests with the Complainants. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

The Complainants have rights in the MAC Trade Mark (since 1986) which precede the Respondents’ registrations of the Domain Names (in 2010) by over 25 years. According to the Complainants, currently, MAC branded cosmetics are sold in more than 65 countries including in China where they have been available since 2005, five years prior to 2010, the year the Domain Names were registered, and in Hong Kong, SAR of China, where they have been available since 1997, 13 years before the Domain Names were registered. (Exhibit H to the Complaint). Moreover, according to the Complainants, the Respondents are not authorized dealers of MAC branded products. The Complainants have therefore established a prima facie case that the Respondents have no rights or legitimate interests in the Domain Names and thereby shifted the burden to the Respondents to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that the Respondents have no rights or legitimate interests in the Domain Names:

(a) There has been no evidence adduced to show that the Respondents are using the Domain Names in connection with a bona fide offering of goods or services. The Respondents have not provided evidence of a legitimate use of the Domain Names or reasons to justify the choice of the word “mac” in its business operations. There has been no evidence to show that the Complainants have licensed or otherwise permitted the Respondents to use the Trade Mark or to apply for or use any domain name incorporating the Trade Mark.

(b) There has been no evidence adduced to show that the Respondents have been commonly known by the Domain Names. There has been no evidence adduced to show that the Respondents have any registered trademark rights with respect to the Domain Names. The Respondents registered the disputed domain names <macmakeupwholesaie.com> on 21 June 2010; <macmakeupwhoiesale.com> on 29 June 2010; <macmake-upwholesale.com> on October 6, 2010; <mac-makeupwholesales.com>, <mac-makeup-wholesale.com>, <macmakeup-wholesales.com> on November 9, 2010; and <macmake-upwholesale.com> on October 6, 2010. The Domain Names are identical or confusingly similar to the Complainants’ Trade Mark.

(c) There has been no evidence adduced to show that the Respondents are making a legitimate noncommercial or fair use of the Domain Names. By contrast, five of seven Domain Names resolve to five virtually identical English based website, including<macmakeupwholesale.com>, <macmakeupwholesaie.com>, <macmakeupwhoiesale.com>, <macmakeupwholesale.com> and <mac-makeup-wholesale.com>. The Respondents are selling counterfeit MAC products through these websites.

The Panel finds that the Respondents have failed to produce any evidence to establish their rights or legitimate interests in the Domain Names. The Panel therefore holds that the Complainants fulfil the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Names in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain names; or

(ii) Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that the Respondents have registered and used the Domain Names in bad faith.

a). Registered in Bad Faith

The Panel finds that the Complainants enjoy a widespread reputation in the Trade Mark with regard to its products. The Complainants have registered its MAC and M.A.C. trademarks worldwide, including registration in Canada since 1986, and in China since 1996. It is not conceivable that Respondents would not have had actual notice of Complainants’ trademark rights at the time of the registration of the Domain Names. The Panel therefore finds that the Trade Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainants. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, the Respondents have chosen not to formally respond to the Complainants’ allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the Domain Names were registered by the Respondents in bad faith with the intent to create an impression of an association with the Complainants’ MAC branded products.

b). Used in Bad Faith

The Complainants claimed that the Respondents attempted to sell counterfeit MAC products on their websites, and said “the functioning websites at five of the Domain Names clearly display the Complainant’s MAC trademark and sell counterfeit versions of Complainant’s goods”. However, the Complainants have not provided sufficient evidence to prove the products being sold are counterfeit. Nevertheless, this does not prevent the Panel from using other evidence to determine whether the Domain Names are used by the Respondents in bad faith.

The Complainants have adduced evidence to prove that by using confusingly similar Domain Names (five of seven Domain Names, which are connected to five functioning websites selling the Complainants’ goods), the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites offering the Complainants’ MAC branded products.

To establish an “intention for commercial gain”, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the Trade Marks, the Panel finds that the public is likely to be confused into thinking that the Domain Names have a connection with the Complainants, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the websites to which the Domain Names are resolved (see Exhibits D and E to the Complaint). In order words, the Respondents have through the use of confusingly similar Domain Names created a likelihood of confusion with the Trade Marks. Noting also that apparently no clarification as to the Respondents’ relationship to the Complainants are made on the homepage of the Domain Names, potential partners and end users are led to believe that the websites with the Domain Names are either the Complainants’ sites or the sites of official authorized partners of the Complainants, which they are not. Moreover, the Respondents have not responded to the Complainants. The Panel therefore concludes that the Domain Names were used by the Respondents in bad faith.

In terms of the two non-active disputed domain names, the WIPO Overview 2.0 noted: “With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith”.(Paragraph 3.2) The WIPO Overview 2.0 further stated: “The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”

Based on information provided by the Complainants, “the MAC brand is one of the world’s top 5 prestige cosmetics brands with yearly sales in the hundreds of millions of dollars”, “the MAC trademark has been registered in more than 99 countries”, and the Complainants currently own “approximately 280 trademark registrations for MAC marks around the world”. The Complainants’ MAC Trade Mark, arguably, is a widely known trademark. Based on the information provided by the Center, “no response to the Complaint” has been filed by the Respondents. Further, based on the information from the Registrars, seven Domain Names have been registered under three different registrant names, but with a same Registrant email. In doing so, it seems that the registrant(s) intends to “conceal its identity”. Therefore, the two non-active disputed domain names in dispute have arguably been used in bad faith.

In summary, the Respondents, by choosing to register and use the Domain Names which are confusingly similar to the Complainants’ widely known trademarks, intended to ride on the goodwill of the Complainants’ trademarks in an attempt to exploit, for commercial gain, Internet users destined for the Complainants. In the absence of evidence to the contrary and rebuttal from the Respondents, the choice of the Domain Names and the conducts of the Respondents as far as the websites on to which the Domain Names resolve are indicative of registration and use of the Domain Names in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

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 Names <macmakeupwhoiesale.com>, <macmakeupwholesaie.com>, <mac-makeup-wholesale.com>, <macmake-upwholesale.com>, <mac-makeupwholesales.com>, <macmakeup-wholesales.com> and <macmakeupwholesale.com> be transferred to the Complainants.

Yijun Tian
Sole Panelist
Dated: May 31, 2011

 

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