World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jurlique International Pty Ltd v. Domains by Proxy, Inc. / troy ho

Case No. D2011-1237

1. The Parties

Complainant is Jurlique International Pty Ltd of Mount Barker, South Australia, Australia, represented by Latham & Watkins LLP, United States of America (the “U.S.” or “USA”).

Respondent is Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America / troy ho of Melbourne, Australia.

2. The Domain Name and Registrar

The disputed domain name <jurlique-cn.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2011. On July 21, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 22, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 25, 2011 providing the registrant and contact information disclosed by GoDaddy.com, Inc., and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 26, 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 Respondent of the Complaint, and the proceedings commenced on July 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2011. The Response was filed with the Center on August 18, 2011.

Noting Respondent’s indication of settlement in the Response, Complainant submitted a suspension request on August 19, 2011. On August 19, 2011, the Center notified the Parties and the registrar GoDaddy.com, Inc. that the administrative proceeding would be suspended until September 18, 2011. Upon receipt of Respondent’s refusal by email of September 8, 2011, Complainant requested to reinstitute the administrative proceedings and submitted a supplemental filing on September 12, 2011. On September 12, 2011, the Center notified the reinstitution of the proceeding.

The Center appointed Yijun Tian as the sole panelist in this matter on September 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

Complainant, Jurlique International Pty Ltd, is a company incorporated in Mount Barker, South Australia, Australia. Complainant is an international skin care company that markets and sells a prestige line of skin care products, and it operates on a worldwide scale, with offices in Australia, the U.S., Europe and Asia.

Complainant has exclusive rights in the JURLIQUE mark. Complainant has over 30 trademark registrations and pending applications for the JURLIQUE mark, including the USA (obtained the registration in the USA since 1987 and in China since 1993) (see Annexes 3-16 to the Complaint). It also owns the domain names <jurlique.com> (since May 10, 1996) and <jurlique.info> (since September 19, 2001) and multiple other domain names incorporating the JURLIQUE mark (see Annex 17 to the Complaint).

The disputed domain name <jurlique-cn.com> is registered with GoDaddy.com, Inc on May 9, 2010, long after the JURLIQUE mark became internationally famous (Annex 1 to the Complaint).

5. Parties’ Contentions

A. Complainant

(a) The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

(a1) Complainant has rights in the JURLIQUE mark.

Complainant, founded in 1985, is an international skin care company that markets and sells a prestige line of skin care products. It operates on a worldwide scale, with offices in Australia, the USA, Europe and Asia.

Complainant has over 30 trademark registrations and pending applications for the JURLIQUE trademark (see Annexes 3-16 to the Complaint).

Complainant has also established extensive common law rights in the USA and worldwide in its JURLIQUE mark through widespread use and promotion of the mark since 1985.

The JURLIQUE mark is well-known and famous throughout the world, and imparts substantial goodwill to Complainant.

Complainant has also registered numerous domain names to promote its products and related businesses under the JURJURLIQUE mark. (Annex 17 to the Complaint)

(a2) The disputed domain name is confusingly similar to Complainant’s trademark.

The disputed domain name <jurlique-cn.com> (registered on May 9, 2010), consists entirely of Complainant’s registered trademark JURLIQUE plus “-cn.”

the disputed domain name <jurlique-cn.com> is identical to Complainant’s JURLIQUE trademark in all material respects and that there is an obvious likelihood of confusion between Respondent’s domain name and Complainant’s registered trademarks.

the addition of the two letters “cn” to Complainant’s well-known and distinctive JURLIQUE trademark falsely suggests that Respondent is an official Chinese dealer of Complainant’s products and that China is the source or origin of Complainant’s products.

(b) Respondent has no rights or legitimate interests in the disputed domain name.

Complainant has owned and used its well-known JURLIQUE marks since 1985, and enjoys worldwide recognition and success for its JURLIQUE marks.

Respondent has never been known by the JURLIQUE mark, and does not have any right or legitimate interest in any variation of Complainant’s well-known JURLIQUE trademarks.

Nor has Complainant ever licensed or otherwise permitted Respondent to use Complainant’s JURLIQUE trademark, or to register any domain name including the JURLIQUE trademark.

Nor does the “fair use” doctrine apply, because one of the elements of the defense is that a respondent not use a complainant’s mark in such a way that suggests sponsorship or endorsement by the complainant.

Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services.

Respondent fails to disclaim a relationship between it and Complainant, despite using screen captures from Complainant’s website, and Complainant’s logo: Respondent also copies Complainant’s slogan “Nature, Science, Innovation,” and offers some of Complainant’s products for sale.

Respondent’s registration and use of the disputed domain name <jurlique-cn.com> is an obvious attempt to corner the market on domain names incorporating Complainant’s marks.

(c) The disputed domain name was registered and is being used in bad faith

Respondent’s registration of the disputed domain name on May 9, 2010 was in bad faith. Respondent has no legitimate rights or interests in the disputed domain name.

Respondent clearly had actual knowledge of Complainant’s JURLIQUE marks since it has been using Complainant’s logo and slogan, and displays some of the JURLIQUE products on the site (Annex 26 to the Complaint).

Respondent acknowledged receipt of the letter but refused to take down its site or cease use of the disputed domain name. (Annex 34 to the Complaint).

Complainant attempted to continue discussions with Respondent (Annex 35 to the Complaint), but Respondent never responded.

As for bad faith use of the disputed domain name, Respondent is clearly attempting to attract consumers to its site for commercial gain, as the website at the disputed domain name <jurlique-cn.com> sells multiple products.

B. Respondent

Respondent claims Complainant states the proper standard as established in the Policy, but has not established that the standard has been satisfied.

(a) Rules, paragraph 3(b)(ix)(1); UDRP paragraph 4(a)(i):

As set up by genuine Jurlique reseller, the website at the disputed domain name <jurlique-cn.com> (“this website”) is a famous website that sells genuine Jurlique products for mainland China market.

Here the two letters “cn” identify that this website is for Chinese market, not for any other global market, and tells customers in other countries that this website and the products it sells only serve Chinese.

The JURLIQUE mark incorporated in to the disputed domain name is only to tell customers that this website is legitimately selling Jurlique products, not any other branded products.

Respondent believes that it meets the standard of nominative fair use of a trademark.

Respondent has never tried to tell or mislead visitors that this website has any relationship with the Jurlique official website, nor revealed any information that this website is constructed or sponsored or endorsed by the JURLIQUE trademark holder.

Respondent have an obvious statement on “about us” section that its role is a reseller of Jurlique products, not official.

The overall structure and the sitemap in this website are totally different from the official websites “www.jurlique.com” or “www.jurlique.com.au” or “www.jurlique.com.cn”, along with the color and layout.

(b) Rules, paragraph 3(b)(ix)(2); UDRP, paragraph 4(a)(ii):

Respondent never considered to sell the disputed domain name to Complainant for profit, nor infringe the disputed domain name with selling non-jurlique products.

This website contributed to expand the name of the jurlique brand in China and spread the value and beliefs of its founder.

The trademark JURLIQUE on this website is nominative fairly used as guidance, not to mislead visitors.

Complainant mistranslated the website’s name, and the correct translation of the website is: “Jurlique China online store”, not “Jurlique Online Store Official Website of China”.

(c) Rules, paragraph 3(b)(ix)(3); UDRP, paragraph 4(a)(iii).

Respondent registered the disputed domain name not for the purpose of selling, renting, or transferring the domain name registration to the Complainant who is the owner of the trademark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name;

Respondent registered the disputed domain name never prevented the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct;

Respondent registered the domain name not for the purpose of disrupting the business of a competitor;

By using the disputed domain name, Respondent has no attempt to mislead Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the evidence introduced by Complainant 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 Complainant has rights in the JURLIQUE Marks acquired through registration. The JURLIQUE Mark has been registered worldwide including in USA and China (see Annexes 3-16 to the Complaint), and Complainant has a widespread reputation in producing skin care products in the world.

The disputed domain name <jurlique-cn.com> comprises the JURLIQUE Mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the addition of “-” and the term “cn” to the mark JURLIQUE. This does not seem to eliminate the identity or at least the similarity between Complainant’s registered trademark and the disputed domain name.

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).

Generally a respondent “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, ADNDRC Case No. HK0500065).

Mere addition of the suffix “-cn” to Complainant’s mark fails to distinguish. By contrast, it may increase the likelihood of confusion. Consumers who visit the website at the disputed domain name <jurlique-cn.com> are likely to be confused and may falsely believe that <jurlique-cn.com> is operated or authorized by Complainant for selling Jurlique-branded products in China (see ABB Asea Brown Boveri Ltd. v. A.B.B Transmission Engineering Co., Ltd., WIPO Case No. D2007-1466; Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768).

Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the JURLIQUE Marks.

The Panel therefore holds that the Complaint fulfils 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 Respondent has rights or legitimate interests in the disputed domain name:

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

(ii) the fact that Respondent has been commonly known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. 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 of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 and cases cited therein).

Complainant has rights in the JURLIQUE Mark globally, including JURLIQUE Mark registration in USA since 1987 and registration in China since 1993 (see Annexes 3-16 to the Complaint) which long precede Respondents’ registrations of the disputed domain name (May 9, 2010).

According to Complainant, Complainant is a world’s leading producer of skin care products with offices in Australia, the U.S., Europe and Asia. Moreover, Respondent is not an authorized dealer of Jurlique branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent 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 Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “Jurlique” in its business operation. Respondent claimed that “[t]he ‘JURLIQUE’ mark incorporated in to this domain name is only to tell customers that this website is legitimately selling Jurlique products, not any other branded products”, and Respondent in “about us” session of its website (the website which the disputed domain name resolves to) described itself as a “reseller of Australian brand Jurlique” (See the Response). However, there has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the JURLIQUE Mark or to apply for or use any domain name incorporating the JURLIQUE Mark.

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <jurlique-cn.com> on May 9, 2010. The disputed domain name is identical or confusingly similar to Complainant’s JURLIQUE Mark.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported JURLIQUE branded products on the website at the disputed domain name <jurlique-cn.com>. (Annex 26 to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils 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 disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name 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 disputed domain name; or

(ii) Respondent has registered the disputed domain name 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website 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 website 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 Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the JURLIQUE Mark with regard to its products. Complainant has registered its JURLIQUE Marks internationally, including registration in USA (since 1987) and in China (since 1993). Moreover, in the Response, Respondent expressly stated that: “[t]his website contributed to expand the name of the jurlique brand in China and spread the value and beliefs of its founder”.

As such, it is clear that Respondent would have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the JURLIQUE Mark not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s JURLIQUE branded products.

b) Used in Bad Faith

Complainant has not claimed the products being sold on the website at the disputed domain name are counterfeit. Nevertheless, this does not prevent the Panel from using other evidence to determine whether the disputed domain name was used by Respondent in bad faith.

Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering Complainant’s Jurlique branded products without authorization. Complainant claimed that “Respondent is clearly attempting to attract consumers to his site for commercial gain, as the website at <jurlique-cn.com> sells multiple products”.

To establish an “intention for commercial gain” for the purpose of this Policy, 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 JURLIQUE Mark, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (see Annex 26 to the Complaint). In other words, Respondent has through the use of a confusingly similar domain name and webpage contents (including Complainant’s slogan “Nature, Science, Innovation”) created a likelihood of confusion with the JURLIQUE Mark.

Noting also that apparently no sufficient clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential partners and end users are led to believe that the website at <jurlique-cn.com> is either Complainant’s sites or the sites of official authorized partners of Complainant, which it is not. Respondent is correct that Complainant indeed mistranslated the website name. The correct translation of the website is: “Jurlique China online store”, not “Jurlique Online Store Official Website of China”. However, this is not sufficient to negate the confusion that potential consumers may have in terms of the relationship between Respondent and Complainant. It may create an impression that Respondent is an online reseller/store authorized by Complainant to sell Jurlique branded products.

The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. The choice of the disputed domain name and the conduct of Respondent as far as the website to which the domain name resolves is indicative of registration and use of the disputed domain name 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 disputed domain name <jurlique-cn.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: October 5, 2011

 

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