WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Artemis Suisse SA v. Club Vivanet, Incorporation
Case No. D2011-0408
1. The Parties
The Complainant is Artemis Suisse SA of Herisau, Switzerland represented by Zulauf Bürgi Partner, Switzerland.
The Respondent is Club Vivanet, Incorporation of Cape Carol, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <artemisskincare.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2011. On March 3, 2011, the Center transmitted by email to GoDaddy.com, Inc a request for registrar verification in connection with the disputed domain name. On March 4, 2011, GoDaddy.com, Inc. 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 March 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2011.
The Center appointed Stefan Abel as the sole Panelist in this matter on March 31, 2011. 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 Swiss Company producing cosmetics. It has been active under its company name Artemis Suisse SA since July 2005 and exercises its business in Switzerland, and in other parts of Europe and intends to expand its business worldwide.
The Complainant is the owner of trademarks containing the element ARTEMIS, including International Registration no. 235285 ARTEMIS, filed on September 5, 1960 claiming protection for perfumery and cosmetics, International Registration no. 966142 ARTEMIS OF SWITZERLAND (device) and International Registration no. 1037202 ARTEMIS OF SWITZERLAND registered for cosmetics and protected in the European Union, United States, Australia, Japan and others.
The Complainant is further owner of the domain name <artemisskincare.com> under which the Complainant promotes its products in German and English language.
The Respondent has registered the disputed domain name <artemisskincare.com> on May 21, 2010. The Respondent’s website at the disputed domain name contains a number of links to several commercial websites including websites of the Complainant’s competitors marketing and promoting cosmetics.
5. Parties’ Contentions
In summary, the Complainant’s contentions are as follows:
The disputed domain name is confusingly similar to the Complainant’s domain name <artemis-skincare.com>. The only difference is the missing hyphen between “artemis” and “skincare” in the disputed domain name. Further, the disputed domain name <artemisskincare.com> is confusingly similar with the Complainant’s trademarks ARTEMIS OF SWITZERLAND and ARTEMIS. The Respondent’s addition of the term “skincare” to the mark ARTEMIS is not sufficient to distinguish the disputed domain name from the Complainant’s marks. Neither the omission of the descriptive generic term “of Switzerland” is able to reduce the likelihood of confusion. The Respondent’s registration and use of the disputed domain name providing links to cosmetics of third parties leads to a confusion of consumers.
The Respondent has no rights or legitimate interests in the disputed domain name. There is no bona fide intention of offering cosmetics under the disputed domain name since the Respondent provides services of a telecommunication company. Further, the Respondent registered the disputed domain name only briefly after the Complainant’s International Registration has been published in the U.S. Official Gazette. The Respondent is not a licensee of the Complainant. Noncommercial or fair use of the disputed domain name is not perceivable.
The Respondent registered the disputed domain name in bad faith as it is exclusively used as a parking website containing links to competitors. The registration and use of the disputed domain name is intended to attract users searching for the goods of the Complainant and thus creates confusion with the Complainant’s company name. Further, the Respondent offered to transfer the disputed domain name to the Complainant against payment.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy provides for a transfer of a disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4 (a) (i) to (iii) of the Policy:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Paragraph 4(b) of the Policy sets out certain circumstances which, in particular, but without limitation, shall be evidence of registration and use of the domain name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks ARTEMIS.
The disputed domain name consists of the Complainant’s trademark ARTEMIS in combination with the term “skincare”. This additional generic term describes the products provided by the Complainant under its company name and trademarks, namely cosmetics. The term “skincare” added to the Complainant’s trademark ARTEMIS in the disputed domain name therefore does not only lack any distinctive character with regard to the signs owned by the Complainant but reinforces the confusing similarity of the disputed domain name to these marks. As a general rule, the addition of a generic term to the disputed domain name consisting of a trademark rarely excludes a finding of confusing similarity under the Policy. This finding is consistent with a number of previous UDRP decisions (See, e.g., Bravomedia LLC v. Name, Administrator, Hong Kong domains LLC, WIPO Case No. D2009-0586; Grupo Televisa, S.A., Televisa S.A. de C.V., Comercio Mas, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v Registrant firstname.lastname@example.org 9876543210, WIPO Case No. D2003-0735; British Broadcasting Corporation v. Registrant (187640) email@example.com +1.25255572, WIPO Case No. D2005-1143).
The Complainant has therefore established the first element of the test in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
There is no indication that the Respondent is licensed or otherwise authorized by the Complainant to use its registered trademarks or to register the disputed domain name.
The element “artemis” used in the disputed domain name does not have any apparent descriptive meaning related to the content of the Respondent’s website. The term “artemis skincare” or “artemis” on the website at the disputed domain name is not used as a designation for a person or a company other than the Complainant or for services or products other than those provided by the Complainant.
By producing evidence on these circumstances, the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The evidentiary burden therefore shifts to the Respondent. The Respondent must then by concrete evidence demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing. The Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish this element of the Policy. It is an impossible task for the Complainant to prove a negative that is primarily within the knowledge of the Respondent, such as the lack of rights or legitimate interests in the disputed domain name. Producing prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain name must therefore be regarded as sufficient to establish the requirement of paragraph 4(a)(ii) if the Respondent fails to rebut the prima facie case. This finding is consistent with the consensus in previous UDRP decisions (see e.g., Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
C. Registered and Used in Bad Faith
The Panel finds that the Complainant has established this element in accordance with paragraph 4(b)(ii) and (iv) of the Policy for the following reasons:
The Panel finds that, by using the domain name for a set of links to commercial websites for the promotion of products in the cosmetics and perfumery sector, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s ARTEMIS company name and trademarks as to source, sponsorship and affiliation of the website (paragraph 4(b)(iv) of the Policy).
The disputed domain name combines the Complainant’s trademarks with the term “skincare” which is descriptive of the Complainant’s scope of business, namely cosmetics. In addition to that, the Respondent’s website provides links to other cosmetic products of the Complainant’s competitors, and Internet users are therefore likely to get the idea that the Respondent’s site at the disputed domain name is an official site of the Complainant, sponsored by the Complainant or affiliated with the Complainant. Such likelihood of confusion will attract more customers to the site at the disputed domain name which will result in commercial gain as the Respondent’s site provides links to numerous commercial websites.
The Panel finds that the Respondent acted intentionally. It is not conceivable to the Panel that the Respondent could have registered the disputed domain name without having the Complainant and its trademarks in mind. The Complainant’s trademarks are protected in the United States where Respondent is located, and have been published before the disputed domain name was registered. The Respondent’s intention to use the disputed domain name as a reference to the Complainant and its trademarks is obvious considering that no rights or legitimate interests in using the disputed domain name are apparent.
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 <artemisskincare.com> be transferred to the Complainant.
Dated: April 14, 2011