WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Estee Lauder Cosmetics Ltd. and Makeup Art Cosmetics Inc. v. Yanling Xue
Case No. D2011-2179
1. The Parties
The Complainants are Estee Lauder Cosmetics Ltd. of Agincourt, Ontario, Canada, and Makeup Art Cosmetics Inc. of New York, United States of America (hereinafter collectively referred to as the “Complainant”), represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Yanling Xue of Changle, Fujian, China.
2. The Domain Names and Registrars
The disputed domain names <macmakeupkopen.com> and <macmakeupreplica.com> (hereinafter collectively referred to as the “Domain Names”) are respectively registered with Xin Net Technology Corp. and HiChina Zhicheng Technology Ltd (hereinafter collectively referred to as the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2011. On December 12, 2011, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On December 13, 2011, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 21, 2011, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 21, 2011, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings 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 in both Chinese and English the Respondent of the Complaint, and the proceedings commenced on January 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2012.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on February 17, 2012. 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 is one of the world’s leading cosmetics companies. The Complainant offers more than 1,000 products including various color cosmetics, foundation, makeup tools, skin care products and fragrances, and every of its product prominently bears the mark MAC. The Complainant holds registrations for the marks MAC and M.A.C. around the world including, inter alia, China where the Respondent purportedly is located.
The Respondent registered the Domain Name <macmakeupreplica.com> on September 29, 2010 and <macmakeupkopen.com> on April 13, 2011. The Respondent has used the Domain Names to direct Internet users to websites selling MAC and M.A.C. branded products.
5. Language of the Proceedings
Under paragraph 11 of the Rules, the language of the proceedings shall be the language of the registration agreement, unless both parties agree otherwise, or the registration agreement specifies otherwise, or the panel determines otherwise.
As confirmed by the Registrars, the language of the Registration Agreements is Chinese. Based on the evidence presented on the record, no agreement appears to have been reached between the Complainant and the Respondent that the language of the proceedings should be English. Therefore, the language of the present proceedings shall be Chinese.
The Complainant filed its Complaint in English and requested for English to be the language of the proceedings for the following reasons:
(a) the Respondent is adept in the English language, for: i) the Domain Names are primarily in the English language with the mark MAC in English and the generic terms “makeup” and “replica” also in English; ii) the website associated with Domain Name <macmakeupreplica.com> is in the English language, the products are advertised to English speaking consumers, the price of the products are available in USD and products can be shipped to the United States and other English speaking countries; iii) in the website associated with Domain Name <macmakeupkopen.com>, the Respondent prices products in USD.
(b) while the Registration Agreements at issue are in Chinese, the Registration Agreement of the Registrar Xin Net Technology Corp. is also available in English and in Article 24 of said agreement, Xin Net Technology Corp. opts for California law to apply and disputes to be heard in California’s courts.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into consideration all relevant circumstances, and it is established practice to take paragraphs 10(b) and 10(c) of the Rules into consideration for the purpose of determining the language of the proceedings to ensure that the parties are treated with equality and that each of them is given a fair opportunity to present its case. It is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. See Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel finds persuasive evidence in the present proceedings to suggest that the Respondent has sufficient knowledge of English, in particular (i) the Domain Names are registered in English language; and (ii) the website associated with the Domain Name <macmakeupreplica.com> appears entirely in English language and it appears the products are advertised to English-speaking consumers rather than Chinese speakers.
The Panel notes that the Respondent was notified of the language of the proceedings matters and has been given a fair opportunity to object to the use of English as the language of the proceedings but did not do so.
The Panel has also taken into consideration that the representative of the Complainant has submitted all documents in English, and additional expense and delay would likely be incurred if the Complaint as well as the evidence is requested to be translated into Chinese.
Using English as the language of the proceedings will not be prejudicial to the Respondent in its ability to articulate the arguments for the case, while if the proceedings were to be conducted in Chinese, the Complainant would be unfairly disadvantaged by being forced to translate the Complaint as well as the evidence into Chinese.
Considering all of these circumstances, the Panel decides that the language of the proceedings shall be English and the decision will be rendered in English.
6. Parties’ Contentions
The Complainant contends that it has rights in the mark MAC based on its use of MAC in and as part of a trademark since 1985. The Complainant holds approximately 280 trademark registrations, the earliest of which was issued in 1986 including 8 registrations in China. The Complainant’s products routinely receive editorial coverage from publications around the world including in China-based publications and have been singled out for awards in China. The Domain Names are identical or confusingly similar to the mark MAC as each of the Domain Names incorporates, in its entirety, the Complainant's registered trademark MAC, and the generic terms added to the Domain Names do nothing to distinguish the Domain Names from Complainant's mark MAC as these terms clearly relate to the Complainant.
The Complainant further contends that the Respondent has no rights or legitimate interests in the Domain Names. The Complainant's adoption and extensive use of the mark MAC predates the registration of either Domain Name. There exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Names. The Respondent has not been or is not commonly known by the Domain Names, and the use by the Respondent of the mark MAC in connection with counterfeit products cannot constitute a bona fide use of the mark under paragraph 4(c)(i) of the Policy.
The Complainant finally contends that the Respondent has registered and is using the Domain Names in bad faith. There clearly is bad faith that the Respondent is using Domain Names to sell unauthorized or non-genuine products and to falsely suggest a connection with the Complainant. It is inconceivable particularly in light of the Respondent's very use of the Domain Names that the Respondent was unaware of the mark MAC when it registered the Domain Names. The Respondent is banking on the established good will and consumer recognition of the mark MAC to drive traffic to its sites in order to sell unauthorized MAC branded product. The only reason for the Respondent's use of the Complainant's mark, including its own pictures of its genuine products as the main source identifying and attention grabbing symbols on its websites is to intentionally confuse consumers and to trade on the Complainant's rights and reputation. Since the ultimate effect of any use of the Domain Names will be to cause confusion with the Complainant, the registration and the use of the Domain Names must be considered to be in bad faith.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
To succeed in a complaint, the Complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the Panel of the following three elements:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has 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.
Based on the evidence presented by the Complainant and the relevant provisions of the Policy, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant has introduced evidence showing it has established rights in the mark MAC. As evidenced by the Complainant, the mark MAC has been registered as trademark in more than 99 countries and the Complainant currently owns approximately 280 trademark registrations for the mark MAC around the world including registrations in China covering a range of goods and services including cosmetics.
The Domain Names incorporate the Complainant’s trademark MAC in its entirety, which generally in itself is sufficient to support the claim that the Domain Names are confusingly similar to the Complainant’s mark MAC. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (“When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”), and also Oakley, Inc. v. Zhang Bao, WIPO Case No. D2010-2289.
The terms “makeupreplica” added to the Domain Name <macmakeupreplica.com> is composed of words “makeup” and “replica”, both of which are generic, in particular, the word “makeup” relates to the Complainant’s products. For the Domain Name <macmakeupkopen.com>, it only differs from the trademark MAC by the addition of the term “makeupkopen”, which is composed of words “makeup” and “kopen” (the Dutch word for “buy”). The Panel finds that the addition of generic or descriptive words is insufficient to dispel the confusing similarity arising from the incorporation of the Complainant’s mark MAC. See Wal-Mart Stores, Inc. vs. Kuchora, Kal, WIPO Case No. D2006-0033 (“It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion”) and also PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Names are confusingly similar to the Complainant’s trademark MAC.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) the fact that respondent has been commonly known by the domain name; or
(ii) legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has proved its established rights in the trademark MAC worldwide, including in China where the Respondent is located. In China, the Complainant opened its first MAC boutique in 2005 and now offers MAC branded products through 30 separate retail locations throughout China including in 9 of the Complainant's own MAC stores.
According to the Complainant, its MAC branded cosmetics are sold in more than 65 countries under the trademark MAC including in China exclusively through authorized retailers, its own MAC stores, its own e-commerce sites or websites of numerous authorized retailers around the world.
The Complainant also claims it has never licensed, permitted or authorized the Respondent to own or use the Domain Names. The Respondent has never been an authorized manufacturer or supplier of genuine MAC products and has never been authorized to supply or provide MAC branded products to sell online or at stores.
The Panel is therefore satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraphs 4(a)(ii) and 4(c) of the Policy. It is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683. The Panel however notes that the Respondent has failed to file a response to prove its rights or legitimate interests in the Domain Names under paragraph 4(c) of the Policy.
Besides, the Panel holds the view that the Respondent has no basis to claim a bona fide offering of goods and services for its sale of counterfeit MAC branded goods.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.
The Panel finds that the Complainant has gained a global reputation in the trademark MAC with regard to its products. The Complainant has been using the mark MAC as trademark since 1985 and holds various MAC trademarks in many countries including trademark registrations in China. The Complainant’s MAC branded products receive editorial coverage from publications around the world including in China-based publications and have been singled out for awards in China. The Panel views that it is inconceivable that the Respondent was unaware of the mark MAC when it registered the Domain Names.
The Complainant claims that it does not sell to wholesaler for subsequent resale and its genuine finished MAC products are never made in China. The Complainant also presented evidence proving that the MAC branded products purchased from the Domain Names are counterfeit. Bad faith is found when the Respondent falsely suggests its relationship with the Complainant by mentioning that the website at the Domain Name <macmakeupreplica.com> is the original online dealer of MAC cosmetics and when the Respondent sells un-genuine MAC branded products on the websites associated with the Domain Names.
The Panel holds that the Respondent is riding on the established good will and consumer recognition of the mark MAC to drive Internet users to its for-profit online stores which sell unauthorized or even non-genuine MAC branded product. The Respondent uses the Complainant’s mark MAC not only in the Domain Names but also on each page of the websites as well as on hundreds of products being offered for sale, so as to falsely suggest an affiliation with the Complainant and its mark MAC. Given the widespread reputation of the trademark MAC, the Panel views that the public is very likely to be confused and misled into the belief that the Domain Names are connected with the Complainant, which is contrary to the fact. Thus, the Panel determines that bad faith is established by the Respondent’s use of the Domain Names to intentionally confuse consumers and to trade on the Complainant's rights and reputation.
In light of the above facts and reasons, the Panel therefore determines that the Domain Names were registered and are being used in bad faith by the Respondent pursuant to paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <macmakeupkopen.com> and <macmakeupreplica.com>, be transferred to the Complainant.
Jacob (Changjie) Chen
Dated: March 6, 2012