WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natura Cosmeticos S/A v. Maria Mello
Case No. D2011-1982
1. The Parties
The Complainant is Natura Cosmeticos S/A of Barueri, Sao Paulo, Brazil, represented by Dannemann Siemsen, Brazil.
The Respondent is Maria Mello of Sao Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <natura-ekos.com> is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2011. On November 14, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On November 15, 2011, Melbourne IT Ltd 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 November 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2011.
The Center appointed Erica Aoki as the sole panelist in this matter on December 28, 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 was founded more than 40 years ago in Sao Paulo and is the largest and most well-known manufacturer of cosmetics and perfumes in Brazil.
The Complainant is listed on Sao Paulo Stock Exchange since 2004 and adopted the direct sales as sales model reaching 800,000 "consultants" (resellers) spread throughout Argentina, Brazil, Chile,Colombia, France, Mexico and Peru in 2008.
The Complainant ‘s trademark NATURA was recognized as a famous trademark by the Brazilian Patent and Trademark Office (“INPI”) and the Complainant holds one the most valuables trademark portfolios in the cosmetics world with over 2,000 trademarks globally registered. In Brazil it owns 482 trademark applications and registrations including the trademark NATURA EKOS, which is subject to a number of registrations in Brazil and abroad.
The disputed domain name <natura-ekos.com> was registered on August 2, 2011.
5. Parties’ Contentions
The Complainant is the owner of the trademark NATURA and NATURA EKOS. The trademark NATURA is recognized as famous trademark by the INPI.
Also the Complainant is the owner of the several registrations for trademark NATURA EKOS and variations thereof having the first registration granted on October 28, 2003.
According to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for NATURA goes far beyond cosmetics and perfumes.
The Respondent did not reply to the Complainant’s contentions.
The disputed domain name <natura-ekos.com>, as at the date of this decision, does not resolve to an active website.
6. Discussion and Findings
In this Panel’s view, the Complainant has satisfied the requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in respect of which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
Based on the facts presented by the Complainant, this Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights under paragraph 4(a)(i) of the Policy. The Panel finds that there is no doubt that the disputed domain name is confusing similar to the Complainant’s registered trademark, as the disputed domain name includes the Complainant’s marks in full.
B. Rights or Legitimate Interests
The Panel finds the following on the record in these Policy proceedings:
- The Respondent is in default and thus has made no affirmative attempt to show any rights or legitimate interests in the disputed domain name;
- The Policy indicates that a registrant may have a right or legitimate interest in a domain name if it was making use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute;
- The Respondent’s knowledge of the Complainant’s right is presumed since it is a well-known trademark;
- The Respondent is in no way connected with the Complainant and has no authorization to use any of the Complainant’s trademarks; and
- There is no evidence that the Respondent is or was commonly known by the disputed domain name as an individual, business or other organization.
Thus, in this Panel’s view, the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Further, the Panel notes that the Respondent has not used the domain name in connection with a legitimate noncommercial or fair use activity.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith under paragraph 4(b) of the Policy and that the Respondent has used the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to the Respondent’s 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 respondent’s site or of a product or service offered on the Respondent’s site.
The Complainant’s trademark is recognized as being a well-known trademark. In this Panel’s view, there is no doubt that the Respondent was aware of the Complainant’s rights on NATURA EKOS at the time the disputed domain name was registered, due to the notoriety of the Complainant’s trademark and the fact that Respondent resides in the same jurisdiction where Complainant has developed its activity for more than 40 years, indicating that such registration was made in bad faith.
Based on that evidence, the Panel finds that the Respondent registered the disputed domain name with the intention of illegally obtaining benefits and harming the Complainant’s reputation in the market.
Also, based on the undisputed allegations, the registration and use of the disputed domain name by the Respondent is in order to divert Internet users seeking information about the Complainant.
Accordingly, and as also supported by the Panel’s findings above under the second element of the Policy, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith under paragraph 4(a)(ii) 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 <natura-ekos.com> be transferred to the Complainant.
Dated: January 11, 2012