WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Artemis Suisse SA v. Fundacion Private Whois
Case No. D2012-0932
1. The Parties
The Complainant is Artemis Suisse SA of Herisau, Switzerland, represented by Zulauf Bürgi Partner, Switzerland.
The Respondent is Fundacion Private Whois of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <artemiscosmetics.com> is registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2012. On May 2, 2012, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On May 3, 2012, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 May 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2012.
The Center appointed Joan Clark as the sole panelist in this matter on June 1, 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 the owner of International Registration 235,285 for the trademark ARTEMIS filed on September 5, 1960, for perfumery and cosmetics, inter alia.
The Respondent is the registrant of the disputed domain name <artemiscosmetics.com>, registered with the Registrar Internet.bs Corp., created on December 12, 2011, and scheduled to expire on December 12, 2012.
5. Parties’ Contentions
The Complainant states it is a Swiss producer of high-end cosmetics and was founded in July 2005. It claims that it is active not only in Switzerland but also in other parts of Europe and Turkey and intends to expand its business to the United States of America, Canada, Japan, China and Australia.
The Complainant avers it owns several Swiss trademarks including ARTEMIS OF SWITZERLAND for high-end cosmetics for women, filed September 5, 1960, and another trademark also for ARTEMIS OF SWITZERLAND for perfumery and cosmetics filed January 27, 2010. In addition the Complainant states it owns an international registration for the trademark ARTEMIS which was filed on September 5, 1960 for, inter alia, perfumery and cosmetics. Further the Complainant states it owns the domain name <www.artemis-skincare.com> which was registered on July 12, 2005, and has been actively used since then to promote the goods of the Complainant.
The Complainant notes that the sole difference between its trademark ARTEMIS and the disputed domain name <artemiscosmetics.com> is the add-on of the highly descriptive term “cosmetics” and the Top Level Domain “.com”. The Complainant avers that ARTEMIS is distinctive for cosmetics and enjoys a wide range of trademark protection. The Complainant asserts that its trademarks ARTEMIS and ARTEMIS OF SWITZERLAND and the disputed domain name are similar.
The Complainant states that it learned of the Respondent’s disputed domain name on March 2, 2012, and that the WhoIs database visited by the Complainant revealed that the Respondent was domiciled in Nassau in the Bahamas. The Complainant further states that the Respondent’s website gave no information as to the contact details of the Respondent or any relevant information concerning the goods and services offered, indicating only that a future use of the Respondent’s website was intended.
The Complainant states there is no evidence that the Respondent is or was commonly known by the name “Artemis” or “Artemis Cosmetics” in the past, and that the Respondent has not established an interest in that name.
The Complainant also states that on March 7, 2012, it sent the Respondent a cease and desist letter, to which the Complainant received two answers which however contained no information. The Complainant further states that on April 2, 2012, it once again sent the Respondent a cease and desist letter, but until now has not received an answer. The Complainant notes that when contacting the WhoIs database on April 23, 2012, it noticed that the address of the Respondent had changed from Nassau/Bahamas to Panama.
The Complainant asserts that after the Respondent presumably received the first cease and desist letter of the Complainant, instead of explaining its interests or rights in the disputed domain name, the Respondent changed its address from the Bahamas to Panama, and that this clearly shows its bad faith.
The Complainant asserts that there is no legitimate reason why the Respondent registered the disputed domain name, that it is not a licensee of the Complainant and that it has no rights or legitimate interests in respect of the disputed domain name.
The Complainant states that the Respondent does not actively use the disputed domain name, and that it is not possible to purchase goods on its website nor to send any communications through its website. This, according to the Complainant, constitutes inaction which falls within the concept of a domain name being used in bad faith.
The Complainant asserts that the Respondent’s choice of the disputed domain name indicates that the Respondent tries to trap, on the Respondent’s website, Internet users who are legitimately searching for the goods of the Complainant, and that this may likely create confusion with the Complainant’s trademarks by implying the Complainant’s sponsorship, affiliation or endorsement of products promoted on the Respondent’s website.
In addition, the Complainant maintains that the Respondent’s change of address in the WhoIs records from the Bahamas to Panama and the hindrance of the establishment of contact can be compared to false contact information. The Complainant also notes that the Respondent’s email addresses are unduly complicated, and concludes that the disputed domain name was registered in bad faith.
The Complainant requests the Panel to order that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of providing that all three elements are present in the Complaint, namely:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <artemiscosmetics.com> is confusingly similar to the trademark ARTEMIS registered in the name of the Complainant. Not only is the leading and significant part of the disputed domain name identical to the registered trademark but the following word “cosmetics” is a generic term which is not distinctive and in fact is descriptive of products sold by the Complainant under its trademark. For anyone familiar with the Complainant and its products, the use of the word “cosmetics” in the disputed domain name would strengthen the association between the disputed domain name and the Complainant’s trademark and would add to the confusion. The suffix “.com” does not detract from the confusing similarity.
The Panel is satisfied that the Complainant has established that it has rights in the registered trademark ARTEMIS.
As the Panel finds that the disputed domain name is confusingly similar to the trademark ARTEMIS in which the Complainant has rights, the first element to be satisfied in order for the Complaint to succeed has been established.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no rights or legitimate interests in the disputed domain name. There being no Response from the Respondent, there is no evidence in the record to contradict the Complainant’s position, and certainly no reason for the Panel to conclude that the Respondent has any rights or legitimate interests in the disputed domain name.
The second element to be satisfied in order for the Complaint to succeed has been established.
C. Registered and Used in Bad Faith
It appears from the evidence that the website under the disputed domain name has not been activated and that the disputed domain name resolves to a website in Japanese. According to the Complainant the website at the disputed domain name “showed only information which was placed there to demonstrate that a future use of the website was intended”. While there is no explicit indication of the way in which the Respondent may have intended to use it, the disputed domain name includes in combination a registered trademark and one of the principal products for which that trademark is registered and has been used by the Complainant. Such combination leads to the inevitable conclusion that the disputed domain name was created and registered in order to confuse Internet users into thinking it was a site associated with the Complainant and its products. The disputed domain name has thus been registered in bad faith.
According to the Complainant, it is not possible to purchase any goods on the website under the disputed domain name or send any communication via the website. Although no active use has yet been made of the website its existence prevents the Complainant from operating a website with the same domain name. The very existence of the disputed domain name constitutes a passive use which the Panel finds to be in bad faith.
Accordingly, the Panel’s finding is that the disputed domain name has been registered and is being used in bad faith, and the third element for the Complaint to succeed has been established.
For 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 <artemiscosmetics.com> be transferred to the Complainant.
Dated: June 15, 2012