WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Natura Cosméticos S/A, Indústria e Comércio de Cosméticos Natura Ltda. v. Cassio Nos

Case No. D2013-1877

1. The Parties

The Complainants are Natura Cosméticos S/A of São Paulo, São Paulo, Brazil and Indústria e Comércio de Cosméticos Natura Ltda. of Cajamar, São Paulo, Brazil, represented by Ricci Advogados Associados, Brazil.

The Respondent is Cassio Nos of Campinas, São Paulo, Brazil, represented pro se.

2. The Domain Name and Registrar

The disputed domain name <origemnatura.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2013. On November 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 November 7, 2013.

The Center verified that the Complaint together with the amendment to 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 November 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2013. The Response was filed with the Center on November 18, 2013.

The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on November 29, 2013. 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 Complainants are well known Brazilian companies, constituted since 1969, dedicated to the manufacturing and sales of cosmetics, perfumery products and natural food products among other activities (Annex 3 to the Complaint).

The Complainants are owners of many trademarks including the word “Natura” and “Natura” per se registered in Brazil and several other countries around the world, including United States of America, Mexico and other countries in Europe (Annexes 4, 5, 6 and 7 to the Complaint).

Per decision of the Brazilian Industrial Property Gazette (“INPI Gazette”) No. 1795, dated May 31, 2005, the trademark NATURA (word) owned by the Complainants was recognized by the Brazilian Industrial Property Institute - INPI (“INPI”) as a famous mark (Annex 8 to the Complaint). This decision was upheld and the NATURA trademark is still considered a famous mark as published by the INPI Gazette No. 2062, dated July 13, 2010 (Annex 9 to the Complaint).

The Complainants are also owners of several domain names with many different generic top-level domains.

The Complainants have been complainants in other cases submitted before the Center and have been successful in those disputes, namely the disputes involving <naturacosmeticos.com> and <naturaperu.com> (Natura Cosméticos S.A., Industria e Comércio de Cosméticos Natura Ltda. v. Belize Domain Whois Service Lt, WIPO Case No. D2007-1165), <naturaportugal,com> (Natura Cosméticos S/A and Indústria e Comércio de Cosméticos Natura Ltda. v. N/A, WIPO Case No. D2008-1128), <perfumesnatura.com> (Natura Cosméticos S/A, Indústria e Comércio de Cosméticos Natura Ltd. v. Ricardo Euzébio Ribeiro, WIPO Case No. D2010-1517) and <perfumenatura.com> (Natura Cosméticos S/A, Indústria e Comércio de Cosméticos Natura Ltda. v. Pedro Andrade Santos, WIPO Case No. D2010-1690) (Annex 10 to the Complaint).

Prior to the commencement of the proceedings, the legal attorneys of the Complainants contacted the Respondent seeking the cancellation of the disputed domain name <origemnatura.com>. The Respondent replied asking the Complainants to desist of the dispute and asking for time to do a transition to another website “www.origemcereais.com.br” (Annexes 11 and 12 to the Complaint).

On December 12, 2012, the legal attorneys of the Complainants acknowledged the Respondent’s response and asked that the measures to cancel the disputed domain name were taken on a priority basis.

The Respondent replied acknowledging the receipt of the Complainants’ notification and informing that he was already taking the necessary measures to cancel the disputed domain name.

After an exchange of cordial emails, the Respondent was notified by the legal attorneys of the Complainants that the Complainants would be informed that the amicable dispute resolution was unsuccessful.

The Complainants argue and prove that the Respondent did not cancel the disputed domain name, which resolved to an active website at the date of the filing of the Complaint with the Center (Annexes 13 and 14 to the Complaint).

Despite the fact the Respondent has effectively registered the domain name <origemcereais.com.br> and that this domain name is linked to the same contents of the disputed domain name, the Panel, through an independent search, verified that the disputed domain name <origemnatura.com> is currently being used.

The disputed domain name was registered on May 12, 2010.

5. Parties’ Contentions

A. Complainant

The Complainants argue that they are well known Brazilian companies, constituted since 1969, and acting in the field of manufacturing and sales of cosmetics, perfumery products and natural food products, among other activities.

Additionally, the Complainants have been using the NATURA expression for almost 40 years as the main distinctive company’s elements, such as corporate name, domain name and trademark of products and services, sold in Brazil and international markets, in several countries like Argentina, Peru, Bolivia, Chile, Colombia, Venezuela, France and Mexico, with great prestige due to the high investments made in the areas of research and development, production, advertising and marketing.

The Complainants also argue and prove that they are owners of the property rights and exclusive use of the NATURA trademark granted to the Complainants by the applicable industrial property laws in Brazil and many other countries.

Furthermore, the Complainants underline the fact that the trademark NATURA was considered a famous trademark by INPI.

The Complainants also inform that they have been successful in previous disputes submitted before the Center, i.e. <naturacosmeticos.com> and <naturaperu.com> (Natura Cosméticos S.A., Industria e Comércio de Cosméticos Natura Ltda. v. Belize Domain Whois Service Lt, WIPO Case No. D2007-1165), <naturaportugal.com> (Natura Cosméticos S/A and Indústria e Comércio de Cosméticos Natura Ltda. v. N/A WIPO Case No. D2008-1128), <perfumesnatura.com> (Natura Cosméticos S/A, Indústria e Comércio de Cosméticos Natura Ltd. v. Ricardo Euzébio Ribeiro, WIPO Case No. D2010-1517) and <perfumenatura.com> (Natura Cosméticos S/A, Indústria e Comércio de Cosméticos Natura Ltda. v. Pedro Andrade Santos, WIPO Case No. D2010-1690) (Annex 10 to the Complaint).

Moreover, the Complainants indicate that they are owners of an extensive list of domain names.

In light of the above, the Complainants allege that it is evident that the disputed domain name <origemnatura.com> consists in a reproduction of the Complainants’ distinctive elements, which causes an undue association by the consumers and the public in general.

The Complainants also state that the Respondent is not a company controlled by them, nor a consultant authorize to sell NATURA products and it is not authorized to register domain names made up with the NATURA expression.

On November 23, 2012, the Complainants notify the Respondent in order to cease and cancel the misuse of the trademark and trade name NATURA in the disputed domain name and on the website to which it resolves, having also informed the Respondent of their rights in connection with the NATURA expression. The Complainants also asked the Respondent to cancel his registration before the Registrar or transfer it to the Complainants.

In response, the Respondent informed he would attend the Complainants’ request, further asking the Complainants to desist of the dispute and asking for time to do a transition to another website, “www.origemcereais.com.br”.

The Complainants contends that the Respondent is apparently a Brazilian citizen and shall not ignore the rights regarding the NATURA trademark, that identify the Complainants and also the perfumery and cosmetic products manufactured by the Complainants and distinguished by the NATURA trademark.

The disputed domain name <origemnatura.com> reproduces the corporate name and the famous trademark NATURA that belong to the Complainants which gives connotation of an official store of the Complainants. The Complainants state that the Respondent intends to mislead the consumers, into believing that he integrates the Complainants’ group.

B. Respondent

Prior to the commencement of the proceedings, the Respondent has replied to the Complainants’ notification asking the Complainants to desist of the dispute and asking for time to do a transition to another website, “www.origemcereais.com.br”.

The Respondent replied acknowledging the receipt of the Complainants’ notification and informing that he was already taking the necessary measures to cancel the disputed domain name. The Respondent also informed that the website connected to the disputed domain name <origemnatura.com> was active for the past 3 years and asking for “some patience” due to the fact that the web designer was a distant relative, who, in the meantime, passed away.

In response to the administrative proceeding, the Respondent confirmed that he has been asked by the Complainants’ legal attorneys to cancel the disputed domain name <origemnatura.com> without further explanations. He also informed that, by the time he registered the disputed domain name, the Respondent was looking for the domain name <origemcereais.com>, which was not available at that time, so the Respondent decided to register the disputed domain name <origemnatura.com> without imagining that this would cause a conflict with the Complainants.

The Respondent clearly states that he is aware that NATURA is a trademark owned by the Complainants, but alleges that their domain is “origemnatura” is a single word, reason why he never imagined this would generate potential conflicts with the Complainants.

The Respondent informs that he has already register the domain name <origemcereais.com.br> and that he has been planning to switch to the new domain name <origemcereais.com>, asking for a transition period, which he estimated to be completed by November 25, 2013.

Finally, the Respondent said he has no further interest to continue using the disputed domain name and has agreed to cancel it.

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name”. Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii).

A. Identical or Confusingly Similar

In this Panel’s view, there are no doubts that the disputed domain name is confusingly similar to the Complainants’ well-known mark NATURA.

As alleged by the Complainant, the disputed domain name is confusingly similar to the Complainants’ trademark because it fully incorporates said mark with the mere addition of the generic term “origem”. It has been held by previous WIPO UDRP panels that the addition of a generic term does not limit the risk of confusion between a complainant’s trademark and a disputed domain name (Compagnie Générale des Etablissements Michelin and Michelin Recherche et Technique S. A. v. Eijiobara Obara, WIPO Case No. D2012-0047, Merck Sharp & Dohme Corp. v. GlobalCom, Henry Bloom, WIPO Case No. D2011-0700, and Fluor Corporation v. KMLOLO, WIPO Case No. D2010-0377).

B. Rights or Legitimate Interests

Following Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666, in order for a complainant to prove that a respondent has no rights or legitimate interests in the domain name, UDRP case law has consistently held that it is sufficient for a complainant to prove a prima facie case. In the present case, it is not necessary to do this as the Respondent clearly states that he has no rights or legitimate interests and accepts to cancel the disputed domain name.

The Panel finds that the second element of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Once the Respondent admitted to know that the rights in connection with the disputed domain name belong to the Complainants and knowing that he registered the disputed domain name to attract Internet users for commercial gain in this Panel’s view, the Respondent subjected itself to the provision of the UDRP that states that one way for the Complainants to prove bad faith registration and use is to show the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the] 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 [the] web site or location or of a product or service on [the] web site or location”. Policy, paragraph 4(b)(iv).

Therefore, the Panel finds that the third element of the Policy has been satisfied.

7. Decision

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 <origemnatura.com> be transferred to the Complainants.

Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: December 13, 2013