WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Elizabeth Arden, Inc. v. Fundacion Private Whois
Case No. D2012-1590
1. The Parties
The Complainant is Elizabeth Arden, Inc. of New York, New York, United States of America (“U.S.”), internally represented.
The Respondent is Fundacion Private Whois, of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <curveperfume.com> is registered with Internet.bs Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2012. On August 8, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2012, 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.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 10, 2012.
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 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2012.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on September 20, 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 a global beauty products company with an extensive portfolio of fragrances, skin care and cosmetics brands.
The mark CURVE was initially owned by Liz Claiborne, Inc. and was purchased by the Complainant in August of 2011.
Currently, the Complainant owns numerous valid and subsisting trademark registrations for the brand CURVE in the United States Patent and Trademark Office. The first registration dates back to 1996.
The disputed domain name was registered on January 26, 2005.
The Panel accessed the website displayed at the disputed name on September 28, 2012 and there was a pay-per-click page with several links for fragrance and beauty products.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights. Furthermore, the word “curve” is not descriptive and directly relates to the Complainant’s activities and business. The addition of a generic top-level domain name extension such as “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected trademark. The addition of the term “perfume” does nothing to render the disputed domain name any less identical or confusingly similar to the Complainant’s trademark CURVE.
(ii) The Respondent has no rights or legitimate interests in the disputed domain name. Satisfying the burden of proving the Respondent’s lack of rights or legitimate interests in the disputed domain name is quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one. The Respondent has not provided the Complainant with any evidence of its use, or demonstrable preparations, to use the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. The Complainant’s trademark is highly distinctive for beauty products and well-known. Therefore, the Respondent is intentionally profiting from the Complainant’s famous trademark. The use of the disputed domain name as a pay-per-click parking page can not be considered a legitimate noncommercial or fair use of the disputed domain name. The Respondent is not a licensee nor an authorized agent of the Complainant, and was not authorized to use the Complainant’s trademark CURVE. The Respondent is not commonly known by the disputed domain name.
(iii) The Respondent registered and is using the disputed domain name in bad faith. The Respondent had actual and constructive notice of the Complainant’s rights in the CURVE mark before registering the disputed domain name. The Complainant’s trademark is widely known. Thus the Respondent could not have been unaware of the existence of the Complainant’s mark when it registered the disputed domain name using the Complainant’s trademark together with the term “perfume”, one of the main products sold under that trademark. Furthermore, the keywords embedded in the Respondent’s website at the disputed domain name state: “Curve Perfume by Liz Claiborne”. The disputed domain name is currently redirected to a web page where Internet users can find sponsored links to various websites and even to competing products.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The 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.
A. Identical or Confusingly Similar
The Panel has no doubt that “curve” is a term directly connected with the Complainant’s activities in the beauty industry.
Exhibit C to the Complaint demonstrates the first filing of the trademark CURVE on May 8, 1995.
The trademark CURVE is wholly encompassed within the disputed domain name. The addition of a generic top-level domain name extension “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a registered trademark.
Furthermore, the addition of the term “perfume” makes the disputed domain name even more confusingly similar to the Complainant’s trademark, as it describes one of the main products sold by the Complainant under the its trademark CURVE.
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the webpage that is published at the disputed domain name hosts pay-per-click links to competitor’s websites.
The Complainant has not licensed or authorized the use of its trademark to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) 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) 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 its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location
When the disputed domain name was registered in 2005, the Complainant’s trademark CURVE was already well known in the field of beauty products worldwide. Therefore, it is not feasible to this Panel that the Respondent could have been unaware of the Complainant’s reputation and business.
This conclusion is emphasized by the fact that the disputed domain name also reproduces the name of the Complainant’s main product under the CURVE trademark.
The disputed domain name is being used as a pay-per-click landing page, displaying sponsored links for third party websites that offer competing products. Therefore, in doing so, the Respondent:
(i) created a likelihood of confusion with the Complainant’s trademark;
(ii) most likely obtained click-through revenue from this practice; and
(iii) deprived the Complainant from selling its products to prospective clients who are clearly looking for the Complainant and, at the same time, promoted products offered by the Complainant’s competitors.
In situations like this, former UDRP decisions have considered this type of use of a domain name enough to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith, satisfying the third element 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 disputed domain name <curveperfume.com> be transferred to the Complainant.
Dated: October 4, 2012