WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jurlique International Pty Ltd v. Zeng Wei
Case No. D2012-1087
1. The Parties
The Complainant is Jurlique International Pty Ltd, SA of Australia, represented by Latham & Watkins LLP, United States of America.
The Respondent is Zeng Wei of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <jurlique.org> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2012. On May 24, 2012, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On May 24, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 31, 2012.
The Center verified that 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 June 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2012.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on July 10, 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 started its activity in 1985. It is an international skin care company that markets and sells a prestigious line of skin care products throughout the world, with offices in Australia, the United States, Europe and Asia.
The Complainant has established prior rights in the registered trademark JURLIQUE mainly protected in Class 3 for cosmetics, by appending evidence of national and international registrations for JURLIQUE, including four Chinese trademarks and the international registration JURLIQUE No. 930145 designating China and the European Community, among other countries.
The Complainant further declares that it has also established extensive common law rights in the United States and throughout the world in its JURLIQUE trademark through widespread use and promotion of the mark since at least as early as 1985.
The Complainant has also registered numerous domain names to promote its products and related businesses under the JURLIQUE=89570 trademark, such as <jurlique.com>, <jurlique.biz> and <jurlique.net> (…).
The disputed domain name <jurlique.org> has been registered on March 1, 2012 and is being used for a parking website.
5. Parties’ Contentions
A.1. The domain name is confusingly similar to several trademarks in which Complainant has rights
The disputed domain name <jurlique.org> can be considered identical to the trademark JURLIQUE rightfully registered by Complainant.
A.2. The Respondent has no rights or legitimate interests in respect of the domain name(s)
A respondent may possess rights or legitimate interests in a domain name if it can show (1) a bona fide use or demonstrable preparations to use the domain name to offer goods and services before the filing of a complaint; (2) others commonly know the respondent by the domain name; or (3) legitimate non-commercial or fair use of the domain name without intent for commercial gain through misleadingly diverting consumers or tarnishing complainant’s trademark.
The Complainant asserts that no agreements, authorizations or licenses have been granted to the Respondent to use Complainant’s trademark.
The Respondent cannot claim any rights to the domain name because “mere registration does not establish rights or legitimate interests in the disputed domain name” and JURLIQUE is a fanciful mark created by Complainant that has no other meaning.
The Respondent is not making a bona fide offering of goods and services through the website or fair use of the domain name, since it uses the disputed domain name <jurlique.org> to resolve to a parking website with pay-per-click links to the Complainant’s competitors, like Lumatone, Yonka, and AminoGensis, and other related products. The Respondent’s use of the disputed domain name evidences a clear intent to commercially gain from misleadingly confusing consumers.
A.3. The domain name was both registered and used in bad faith
The Complainant has used the JURLIQUE trademark for over 20 years, and the mark has developed a strong reputation and is widely recognized by consumers. Accordingly, the Respondent should have known of the Complainant’s trademark rights when it registered the disputed domain name <jurlique.org>.
The Respondent uses the disputed domain name <jurlique.org> to host pay-per-click links to competing products. As such, the Respondent’s registration qualifies as a per se bad faith registration.
The Respondent clearly uses the disputed domain name <jurlique.org> to create a likelihood of consumer confusion and commercially gain thereby, because the disputed domain name incorporates wholesale Complainant’s famous mark and resolves to a website with pay-per-click advertisements.
The Complainant previously sent the Respondent a letter requesting it ceases using the disputed domain name and transfers it to the Complainant. The Respondent’s only reply was to demand 3,000 Euros, clearly an amount which is far in excess of the Respondent’s “out-of-pocket costs” related to the disputed domain name. Such behaviour revealed the Respondent’s bad faith, before this proceeding was started.
The Respondent registered and uses the disputed domain name <jurlique.org> in bad faith because it actively exploits his knowledge of the Complainant’s trademark to attract, divert, and confuse consumers for commercial gain, as it has previously done with other domain names and trademarks protected for cosmetics in the past.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name incorporates the distinctive trademark JURLIQUE. Since the Complainant has rights on the trademarks JURLIQUE, Panel finds that the disputed domain name is identical to the trademark JURLIQUE. The condition of the paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
As set forth by paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a):
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a 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 Respondent does not make a bona fide offering of goods and services under the disputed domain name and has not been commonly known under the disputed domain name.
The Respondent has no connection of affiliation with the Complainant, and the latter asserts it has not consented to the Respondent’s use of the trademark in the disputed domain name.
The Respondent is not making a legitimate noncommercial or fair use of the domain name.
Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by the Panel to be evidence of the bad faith registration and use of a domain name. It provides that:
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or the Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has 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) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location.
In view of the protection of the trademark JURLIQUE and of the activity developed under the trademark JURLIQUE, the Panel is of the opinion that the Respondent must have been aware that the disputed domain name is identical to the protected trademark JURLIQUE of the Complainant.
Registering a domain name, offering it for sale and using it for parking services presenting relevant links in order to generate Pay Per Click (PPC) revenues is a popular and common domain name monetization tactic.
According to the provided screenshot of the website “www.jurlique.org”, the provided ads are targeting the Complainant’s customers, for cosmetics, but the Complaint does not explain how this page has been generated on the website “www.jurlique.org”.
There is no evidence that the landing page of the website “www.jurlique.org” was directly targeting the goods and services offered by the Complainant.
It might be that the provided screenshot is the result of a targeted search on the website’s search engine, for instance on “beauty”.
Given the fact that the complaint has not been contested and that the criticized links have effectively been provided on the website “www.jurlique.org”, the Panel finds that the Complainant has made a prima facie showing of the use of the disputed domain name <jurlique.org> in relation with cosmetics.
The Panel is of the opinion that the disputed domain name was registered intentionally primarily for the purpose of selling it and with the objective of financial gain, both through the sale of the disputed domain name and through the pay per click links.
The Panel finds also that the disputed domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, since the Respondent has engaged in a pattern of such conduct.
This constitutes bad faith registration of the disputed domain name in application of paragraph 4(b)(i) and (ii) of the Policy.
The Respondent appears to use the disputed domain name to intentionally attempt to divert Internet traffic to its website by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of its websites. This constitutes bad faith registration and use of the Domain Names in application of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, the Panel finds that the Complainant has established the finding of bad faith registration and use within the meaning of 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 name <jurlique.org> be transferred to the Complainant.
Dated: July 24, 2012