WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
O P I Products, Inc. v. Yu Lin, lin yu
Case No. D2011-1330
1. The Parties
The Complainant is O P I Products, Inc. of North Hollywood, United States of America, represented by Blakely, Sokoloff, Taylor & Zafman, LLP, United States of America.
The Respondent is Yu Lin, lin yu of Sui Yang, China.
2. The Domain Name and Registrar
The disputed domain name <discountopinailpolish.com> (the “Domain Name”) is registered with HiChina Zhicheng Technology Ltd (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2011. On August 4, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 5, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 9, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On August 11, 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 Respondent of the Complaint, and the proceedings commenced on August 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2011.
The Center appointed Karen Fong, Sally M. Abel and Yong Li as panelists in this matter on September 29, 2011. The Panel finds that it was properly constituted. Each member of 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 is a leading manufacturer and retailer of cosmetic products worldwide, and in particular, nail polish, nail lacquers, other nail care preparations, nail tools, artificial nail powders and services related to nail care. The Complainant and its predecessors in interest have continuously used the OPI trade mark as their primary trade mark since 1981.
The Complainant is the registered owner of trade mark registrations for its OPI trade marks, including OPI in standard characters (word marks) and various stylisations in over 100 countries including the United States of America (“USA”), China, Taiwan Province of China and Hong Kong, China. Details of these trade mark registrations are as follows:
OPI (word) under TM Registration No 2300077 in the USA;
OPI (stylised) under TM Registration No 1813313 in the USA;
OPI (stylised) under TM Registration No 1374489 in the USA;
OPI NAIL LACQUER (word) under TM Registration No 3037202 in the USA;
OPI (stylised) under TM Registration No 3164420 in the USA;
OPI (word) under TM Registration No 2018845 in China;
OPI (in Chinese Characters) under TM Registration No 5521472 in China;
OPI (word) under TM Registration No 8666/2002 in Hong Kong, China; and
OPI (word) under TM Registration No 1075325 in Taiwan Province of China.
The earliest of the above registrations dates back to 1984. The Complainant has used its OPI trade mark extensively worldwide and it has become famous in the cosmetics field. The OPI products total over USD 500 million in retails sales with celebrities such as Serena Williams and Katy Perry designing and promoting its collections.
The Complainant operates several OPI websites including “www.opi.com” and “www.opi.net.au”. The website “www.opi.com” receives over 100,000 unique visits per month.
The Domain Name was registered on April 18, 2011. The Domain Name is connected to a website “www.discountopinailpolish.com” (“the Website”) selling OPI products that the Complainant has identified as counterfeit.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the OPI trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(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 was registered and is being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese.
The Complainant submits in paragraph 10 of the Complaint as well as in its response to the Center on August 11, 2011 that the language of the proceeding should be English. The Complainant contends that the Respondent is capable of communicating in the English language based on the following relevant facts:
The Website has exclusively English content.
It is unclear from the available information whether the Respondent is actually conversant in Chinese.
The prices for the products sold on the Website are in US dollars. The currency can be changed to Euros, UK pounds, Canadian and Australian dollars, which suggest that the Respondent uses English on a regular basis.
The blog which forms part of the Website displays a high level of English language and vocabulary.
Further, the Complainant contends that as the Registrar also maintains an English language site (“www.en.hichina.com”), it is unclear whether the language of the registration agreement in this case is in fact Chinese as stated by the Registrar since the Registrar has not provided evidence of the same. The Complainant further contends that given the strong evidence of the Respondent’s familiarity with English and the Registrar’s corresponding English language site together with the Respondent’s provision of false registration information (see below, section 6E) and counterfeiting activities, it is highly likely to register domain names via foreign registrars especially in China to try to avoid the national laws of the USA, Australia and other countries.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding by the specified due dates.
Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the trademark OPI through use and registration that pre dates the Domain Name.
The Domain Name integrates the Complainant’s registered trade mark OPI with the common and descriptive terms “discount” and “nail polish” and the generic “.com” domain suffix. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix. Further, the addition of the descriptive terms “discount” and “nail polish” does not negate the confusing similarity encouraged by the Respondent’s complete integration of the OPI trade mark in the Domain Name. E.g. N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. V. Wu bingjie aka bingjie we/ Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207.
In addition, the Complainant has also submitted evidence of actual confusion of an Internet user as to whether the Website was affiliated with the Complainant. An inquiry by the user who wanted to purchase OPI nail polish from the Website was directed to the Complainant’s Australian distributor asking if the Website had any relations with the Complainant.
The Panel finds that the Domain Name is confusingly similar to the OPI trade mark of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
D. Rights or Legitimate Interests
The Complainant contends that OPI products are sold only through licensed distributors and the Respondent has not been authorized by the Complainant to sell OPI products. The Complainant has submitted a signed declaration from its Chief Operating Officer that a trap purchase made of OPI nail lacquer from the Website revealed upon examination by the Complainant that these goods were counterfeit. In this Panel’s view, there can be no legitimate interest in the sale of counterfeits. The Complainant has satisfied its burden of proof of showing that the Respondent lacks rights or legitimate interests in the Domain Name. (See Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 and Farouk Systems, Inc v. QYM, WIPO Case No. D2009-1572)
In any event, the Respondent has defaulted. Paragraph 14 of the Rules provides that the Panel may draw such inferences from such a default as it considers appropriate. Accordingly, the Panel infers from the Respondent’s silence that the Complainant’s allegations are, in fact, correct. And the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
E. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Complainant’s marks when it registered the Domain Name. The Complainant has provided sufficient evidence that the Domain Name registration post dates the OPI trade mark registrations.
The very incorporation of the Complainant’s trade mark in the Domain Name and the display of the Complainant’s trade marks and counterfeit products on the Website confirm the Respondent’s awareness of the trade marks.
Further, the Respondent initially registered the Domain Name in the name of “sddsfsdfs” with similarly indecipherable contact information consisting of random letters and numbers. The deliberate use of fictitious and/or ineffective contact particulars may be further evidence of bad faith. (Farouk Systems Inc. v. David, WIPO Case No. D2009-1245). Upon the Complainant’s reporting of the deficient information to ICANN, the Respondent’s information was updated to its current form. The updated information suggests that the Respondent’s information remains false and incorrect. The administrative address “pudsfd fujwe 389000” remains unchanged. Further at the time of the updating of the registrant details, the registrar was also changed suggesting that the Respondent may be avoiding a website take down.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The products offered for sale on the Website are counterfeit OPI products for reasons set out in paragraph 6D. The use by a respondent of a domain name which includes a well-known trade mark to resolve to a website which offers and sells counterfeit products under that trade mark may be evidence of bad faith registration and use. (See Burberry Limited v Jonathan Schefren, WIPO Case No. D2008-1546 and Prada SA v. Domains for Life, WIPO Case No. D2004-1019).
In addition, the Website was set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. The following are some of the features which the Respondent uses:
The Complainant’s OPI trade marks in their different forms. The top of the Website’s home page shows the OPI trade mark in the same font and stylisation as used at the top of the Complainant’s own websites;
On the “Notice” section of the Website, Internet users are told that it is a “great supplier of cheap OPI nail polish collections” and refers to OPI as its “wholesaler” despite its lack of affiliation with the Complainant;
The names of the various “OPI collections” which correspond to the Complainant’s nail lacquer collections;
The images of the OPI bottles on the website (the OPI nail lacquer bottle design is a registered trade mark under US Registration No 3,569, 558);
The Complainant’s Australian authorised distributor’s trade marks;
The Complainant’s copyrighted images.
As stated in paragraph 6C, evidence of an incident of actual confusion was submitted by the Complainant indicating that the Respondent succeeded in its intention to confuse and mislead. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s website is and the products sold on it are those of or authorised or endorsed by the Complainant.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy, thus satisfying paragraph 4(a)(iii) of the Policy.
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 <discountopinailpolish.com> be transferred to the Complainant.
Sally M. Abel
Dated: October 18, 2011