WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SEPHORA Sociéte Anonyme (SA) v. Domains By Proxy, Inc. / Palmeros Group Inc.
Case No. D2011-1093
1. The Parties
The Complainant is SEPHORA Sociéte Anonyme (SA) of Billancourt, France represented by King & Spalding, United States of America.
The Respondent is Domains By Proxy, Inc. / Palmeros Group Inc. of Scottsdale, Arizona, United States of America and Las Vegas, Nevada, United States of America, respectively.
2. The Domain Name and Registrar
The disputed domain names <sephorabrand.com> and <sephoracollection.com> are registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2011. On June 29, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain names. On July 4, 2011, Wild West Domains, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 5, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 8, 2011.
The Center verified that the Complaint together with the amended 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 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2011.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on August 4, 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 in these proceedings is SEPHORA Société Anonyme (SA), a company organized under the laws of France. The Complainant is a well-known company, and according to the uncontested allegations of the Complainant, the leading chain of perfume and cosmetic stores in France with presence in 13 other countries. In the United States (the “U.S.”), according to the Complainant, there are over 250 Sephora stores and over 200 Sephora counters inside JC Penney stores. The Complainant was founded in 1993 in France and expanded in the U.S. in 1999. According to the uncontested allegations provided by the Complainant, the latter is the owner of the brand name SEPHORA.
The following Sephora registrations are owned and licensed by the Complainant in the United States:
1. SEPHORA, no. 2431967, registered on February 27, 2001, for essential oils for personal use and other products in the same class, for retail store services in the field of perfumery and other services in the same class and for consulting services in the field of perfumery and beauty products.
2. SEPHORA, no. 2770691, registered on October 7, 2003, for leather and imitations of leather products and clothing products.
3. SEPHORA and Design, no. 2431968, registered on February 27, 2001, for retail store services in the field of perfumery and other services in the same class.
4. NATURALLY SEPHORA INGREDIENTS OPTIONS RESULTS and Design, no. 3738088, registered on January 12, 2010 for cosmetics and other products in the class, for retail store services in the field of cosmetics and other services in the same class.
5. SEPHORA PURE, no. 3744176, registered on February 2, 2010, for cosmetics.
The Complainant, according to its uncontested allegations, has extensively promoted and advertised its goods and services offered under the mark SEPHORA. The mark SEPHORA is well-known also throughout North America. Furthermore, according to the uncontested allegations of the Complainant, it owns common law rights in the trademark SEPHORA COLLECTION as demonstrated on the “www.sephora.com” website.
The Complainant has used the SEPHORA mark as above. The Panel is unaware of any further information relative to this case with regard to the Respondent, except that given by the Complainant and mentioned above.
The disputed domain names <sephorabrand.com>, and <sephoracollection.com> were registered by the Respondent. According to the uncontested allegations of the Complainant, the intention of the Respondent is to benefit and intends to continue benefitting from the goodwill associated with the Complainant’s mark.
The disputed domain names were created on April 25, 2010.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain names and has not been commonly known by the disputed domain names and that the Respondent registered and is using the disputed domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue related to the default of the Respondent. The implications of a default in this case are telling: since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the Complainant must prove that each of these three elements are present”), the Panel may not just grant the Complainant’s request automatically, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has presented sufficient evidence that it owns the rights in the trademark SEPHORA. The Complainant’s registrations for the mark all over the world, including France and the U.S., have proven this. The use of the mark in many countries reinforces this ownership. According to the uncontested allegations of the Complainant “the mark SEPHORA is famous and well-known, identifying Sephora as the source or origin of goods and services, particularly cosmetics and beauty products and retail store services in the field of perfumes, cosmetics and beauty products”.
The mere fact that the Respondent has added to the SEPHORA mark the generic terms “brand” and “collection” does not affect the essence of the matter: the disputed domain names wholly incorporate the trademark SEPHORA, registered and owned by the Complainant, and in the circumstances of this case is by itself sufficient to establish the criterion of similarity for purposes of the Policy, as many panels have found in the past. See e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd., WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain names <sephorabrand.com> and <sephoracollection.com> are confusingly similar to the Complainant’s trademarks SEPHORA.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of three circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s right to and the legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case.
(i) Use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services prior to the dispute: in the Panel’s view, the Respondent is not using the disputed domain names to make any bona fide offering of goods or services. The evidence provided by the Complainant shows that the websites associated with the disputed domain names have been used as pay-per-click advertising websites for the Respondent. The Respondent has no rights including trademark rights in SEPHORA, according to the uncontested allegations of the Complainant.
(II) An indication that the Respondent has been commonly known by the disputed domain names, even if it has acquired no trademark rights. In this case, there is no such indication from the present record.
(iii) Legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue. Again, in this case there is no such indication from the record.
Furthermore, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.
As a conclusion on this point, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
The Complainant’s argumentation is based on the four circumstances mentioned in paragraph 4(b) of the Policy, in order to demonstrate the Respondent’s bad faith registration and use of the disputed domain names.
In reviewing the present case, it appears that the Respondent has used the disputed domain names as pay-per-click advertising websites to intentionally attempt to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s marks as to the source, affiliation, etc., of the websites. This shows that the Respondent has registered and used the disputed domain names in bad faith under paragraph 4(b)(iv) of the Policy.
The Panel also notes the default of the Respondent, which in the present circumstances “reinforces the inference of bad faith registration and bad faith use”. The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915.
The bad faith of the Respondent may also be reinforced through a simple, logical process, as well, in the sense that it would, indeed, be highly unlikely that the Respondent would register randomly and unintentionally domain names, that include the SEPHORA trademark, in combination with the words “brand” and “collection” for pay-per-click websites.
As a consequence to the above, the Panel finds that the Respondent registered and used the disputed domain names in bad faith.
The Complainant has successfully proven that the disputed domain names are identical or confusingly similar to trademarks in which it has rights, that the Respondent has no rights or legitimate interests in the disputed domain names, and that the Respondent registered and used the disputed domain names in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <sephorabrand.com> and <sephoracollection.com> be transferred to the Complainant.
Christos A. Theodoulou
Dated: August 9, 2011