The Complainant is Mary Quant Cosmetics Japan Ltd. of Tokyo, Japan.
The Respondent is MustNeed.com of Taipei, Taiwan, Province of China.
The disputed domain name <maryquant.com> is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2009. On November 30, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On December 3, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name. 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 December 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 29, 2009.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on January 12, 2010. 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.
The following summary sets out the uncontested factual submissions made by the Complainant:
(a) The Complainant is a company duly organized and existing under the laws of Japan and was incorporated on November 18, 1970.
(b) The Complainant has been using the MARY QUANT trademark exclusively in Japan since 1970 in respect of, among other things, cosmetics, toilet articles and fashion. The trademark is also used and promoted on a worldwide basis. In reaching its target market, the Complainant advertises its products, bearing the MARYQUANT trademark, in various local and foreign publications.
(c) The Complainant has registered the MARY QUANT trademark in many different jurisdictions including Japan, Taiwan, Province of China, Australia, the People's Republic of China, Hong Kong SAR of China, Italy, France, Germany and the United Kingdom.
(d) In Japan, the trademark MARY QUANT (bearing trademark registration no: 083159) is recognized by the Japan Patent Office as a “well-known” trademark.
(e) The Complainant also owns and operates its official website at “www.maryquant.co.jp”.
(f) The Respondent uses the disputed domain name to host a search engine service containing links to a variety of subjects and interests such as office furniture, beauty, finance and lifestyle.
(g) The Complainant had attempted to contact the Respondent through the issuance of postal and email demand and warning letters on July 17, 2009, July 21, 2009, July 31, 2009 and August 5, 2009.
However, the Complainant did not receive any response from the Respondent.
(h) There have been at least eight similar cases filed against the Respondent pursuant to the Policy, in which, seven out of the eight cases were held against the Respondent.
(i) The disputed domain name <maryquant.com> was registered on April 21, 2003.
(a) The Complainant contends that the disputed domain name is identical or confusingly similar to the MARY QUANT trademark in which the Complainant has rights.
(b) The Complainant further contends that the Respondent does not have any rights or legitimate interests in respect of the domain name because:
(i) the Respondent has not been licensed or authorized by the Complainant to use the MARY QUANT trademark or name;
(ii) there is no evidence to show that the Respondent is commonly known by the name MARY QUANT;
(iii) it does not appear that the Respondent is using the domain name for a noncommercial or fair use or has used the domain name in connection with a bona fide offering of goods or services. The Respondent's website appears to be an affiliate website for Internet advertising and to derive revenue from clicks by Internet users.
(c) In relation to the requirement of bad faith registration and use of the domain name, the Complainant contends as follows:
(i) Internet users attempting to access the Respondent's website will likely believe that it is a site affiliated with the Complainant due to the links provided on the website such as sundry items, cosmetic surgery, interior and skin care and the pictures that relate to the Complainant's cosmetics business.
(ii) by using the disputed domain name, the Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent's and other sponsors' linked websites by creating a likelihood of confusion as to the affiliation, sponsorship or endorsement of the Respondent's website.
(iii) the Respondent's record of having been involved as a respondent in at least eight other similar proceedings pursuant to the Policy displays a pattern of conduct that suggests bad faith registration and use of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate rights in respect of the disputed domain name; and
(c) that the disputed domain name has been registered and is being used in bad faith.
The various worldwide trademark registrations and the evidence of use adduced by the Complainant, evidences the Complainant's rights to the MARY QUANT trademark.
The disputed domain name is identical to the MARY QUANT trademark as it reproduces the trademark in whole.
Accordingly, this Panel concludes that the disputed domain name is identical to the MARY QUANT trademark, in which the Complainant has sufficiently proven that it has rights.
The Complainant's assertions have not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests in the disputed domain name.
The Complaint unequivocally stated that the Respondent had not been licensed or authorized by the Complainant to use any of the MARY QUANT trademarks, the disputed domain name or to reproduce any of the contents of the Complainant's official website located at “www.maryquant.co.jp”.
No evidence was provided to indicate that the Respondent is known by the name “maryquant”.
The Complainant has also adduced evidence that the disputed domain name is being used solely for commercial gain. In this regard it appears that the Respondent derives a financial benefit by diverting Internet traffic through the domain name to a search engine and linking portal. The use of a well-known trademark, as opposed to an unknown term, would increase the probability of higher returns to the domain name owner. Hence, the need for the Respondent to convincingly justify its rights or legitimate interests to the disputed domain name.
Moreover, the fact that the website located at “www.maryquant.com” contains key words which are similar to those found on the Complainant's official website lends support to the Complainant's assertion that the disputed domain name is not being used for any legitimate noncommercial or fair use.
The failure of the Respondent to respond to the Complainant's contentions and the evidence adduced by the Complainant leads the Panel to find that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel could find no justification for, or rights or legitimate interests on the part of the Respondent to the words comprising the disputed domain name.
Based on the above circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
Having reviewed the evidence adduced by the Complainant including the print-outs from the website located at “www.maryquant.com”, the Panel could not find any justifiable link between the Respondent and the MARYQUANT trademark. The absence of such a link suggests that the name and trademark MARYQUANT was a calculated selection by the Respondent to form a domain name in order to disrupt the Complainant's ongoing business, to extract some form of direct or indirect commercial gain or to otherwise ride on the established goodwill of the Complainant.
By incorporating wholly the Complainant's MARY QUANT trademark long after the mark had attained fame, is suggestive of bad faith on the part of the Respondent. Bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.” (See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
The manner in which the Respondent operates its website seems to suggest that the Respondent either wishes to disrupt the Complainant's ongoing business or to seek to generate Internet traffic resulting from the confusion which arises due to the similarities between the Complainant's trademark and the disputed domain name. In Digital Spy Limited v. Moniker Privacy Services and Express Corporation, WIPO Case No. D2007-0160, the Panel held that “[r]egistering a domain name with knowledge of another company's rights in the name, and with intention to divert traffic is evidence of bad faith.”
The Complainant has also contended that the Respondent has engaged in a similar pattern of registering domain names containing the trademarks of third parties and then using those domain names to direct web traffic to web sites from which it derives benefit. Such pattern is strong evidence supporting a finding of bad faith (See Société BIC v. LaPorte Holdings, LLC, WIPO Case No. D2005-0342). Upon reviewing the list of WIPO decisions against the Respondent, the Panel confirmed to itself that the Respondent had, in the past, displayed a pattern of conduct which was not dissimilar to the conduct complained of by the Complainant.
Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant.
For all 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 <maryquant.com> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Dated: January 26, 2010