WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natura Cosméticos S/A and Indústria E Comércio Decosméticos Natura Ltda v. Host Master, Transure Enterprise Ltd
Case No. D2012-1902
1. The Parties
Complainants are Natura Cosméticos S/A and Indústria E Comércio Decosméticos Natura Ltda. Both of São Paulo, Brazil, represented by Ricci Advogados Associados, Brazil.
Respondent is Host Master, Transure Enterprise Ltd of Tortola, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland..
2. The Domain Name and Registrar
The disputed domain name <aquitemnatura.net> (the "Domain Name") is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2012. On September 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on October 3, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on October 4, 2012.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on October 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2012.
The Center appointed Michael A.R. Bernasconi as the sole panelist in this matter on November 14, 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
Complainants are two Brazilian companies, established in 1969, acting in the field of manufacturing and sales of cosmetics and perfumery products, and the owners of several trademarks containing the word "natura" in different countries. In addition, Complainants are the owners of several domain names containing the word "natura". Inter alia, Complainants are the owners of the domain name <aquitemnatura.com.br>, which has been registered on January 30, 2012, as well as of the domain name <aquitemnatura.com>, which has been registered on July 30, 2012. Besides these two domain names, Complainants have also applied for a registration of AQUI TEM NATURA as trademark before the Brazilian Trademark Office on February, 22, 2012.
The Domain Name was registered by Respondent on June 20, 2012.
5. Parties’ Contentions
Complainants argue that they are the owners of the Brazilian word trademark NATURA as well as the owners of several other Brazilian and international trademarks containing the word "natura". Complainants allege that the trademark NATURA has been recognized by the Brazilian Trademark Office as a highly renowned trademark in Brazil, resulting in protection for all fields of activity and all classes. Further, Complainants argue to be the owner of the Brazilian trademark AQUI TEM NATURA.
Complainants are of the view that the use of the Domain Name by Respondent is an infringement of their trademark(s) and that Respondent does neither have any rights or legitimate interests in respect of the Domain Name nor has the Domain Name been registered or used in good faith. According to Complainants, Respondent must have known of their various NATURA trademarks because these trademarks are well- known in Brazil. Complainants are of the view that Respondent does not have any prior right nor any other interest in the word "natura" which would outweigh Complainants rights. In addition, Complainants have not given Respondent any permission to use their trademark.
The Complainants further submit that the disputed domain name was registered and is used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
i) the domain name registered by the Respondent 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 domain name; and
iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainants have proven that they are the owners of the Brazilian trademark NATURA and of other trademarks containing the word "natura". In addition, Complainants were also able to prove that they are the owners of several domain names containing the word "natura", inter alia of the domain names <aquitemnatura.com.br> and <aquitemnatura.com>.
The Domain Name consists also of the word "natura", however, with the supplement "aquitem". "Aqui tem" is a Brazilian expression and can be translated as "here it has". Hence, the supplement "aquitem" in Respondent's Domain Name is merely descriptive and therefore not suitable to distinguish the Domain Name from Complainants trademarks, in particular if considering that Complainants' trademarks are rather strong. The Domain Name is therefore identical with the Complainants' trademarks. In addition, it must be considered that Complainants have applied for the registration of AQUI TEM NATURA in February 2012 and therefore well before Respondent had registered the Domain Name. This trademark is also identical with the Domain Name.
The Panel therefore is of the view that Complainants were able to demonstrate that the first requirement according to the Policy is fulfilled.
B. Rights or Legitimate Interests
Complainants were able to show that they are the owners of various NATURA trademarks in Brazil and in several other countries all over the world. Some of these trademarks have been registered some 40 years ago. Respondent did not provide any evidence that it has used the term "AQUI TEM NATURA" before Complainants have registered their trademarks, the domain name <aquitemnatura.com.br> or before Complainants have launched the Facebook App called "Aqui Tem Natura". Also a Google search by the Panel did not provide any evidence to this respect. It must also be kept in mind that Complainants have registered an identical third level domain <aquitemnatura.com.br> in January 2012 and therefore well before Respondent registered the Domain Name. The Panel is therefore of the view that Respondent has not acquired any rights in the Domain Name that would outweigh Complainants' rights.
In addition, it must be considered that Complainants have not given permission to Respondent to use the trademark for its business purposes. Respondent, therefore, cannot claim that it has any right to use the Domain Name based on a license or other agreement with Complainants.
Considering these circumstances and the Panel’s findings below, the Panel comes to the conclusion that Respondent does not have any rights nor any legitimate interests in the Domain Name and hence the second requirement according to the Policy is also fulfilled.
C. Registered and Used in Bad Faith
On the third element of paragraph 4(a) of the Policy, i.e. the issue of a bad faith registration and use, it is undisputed that Complainants trademarks were registered well in advance of the Domain Name. Since Complainants' trademarks are well-known in Brazil and in South and Middle America, the Panel finds it unlikely that Respondent was not aware of Complainants' trademarks and its domain names. It cannot be a mere coincidence that Respondent registers exactly the same expression “Aqui Tem Natura” which Complainants are using for their Facebook App. Also the fact that Respondent explicitly provides links to Complainants' and Complainant’s competitor’s products on the website to which the Domain Name directs, is in the Panel's view a clear sign that Respondent did not register the Domain Name and operates the website with full knowledge of Complainants' trademarks and products.
The Panel finds that Respondent intentionally tried to benefit from the famous and well-known brand of Complainants and that Respondent intentionally attempted to attract, for commercial gain, internet users by creating a confusion with Complainants' established trademarks. Therefore, the Panel is of the view that also the third and final requirement is fulfilled.
The Panel believes it important to highlight that the above considerations are true in connection with the Domain Name and the evidence submitted to the Panel. However, the above considerations should not be interpreted as giving the Complainants an unlimited right on any domain name in which the word "natura" (or similar) were to be used.
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 <aquitemnatura.net> be transferred to Complainants.
Michael A.R. Bernasconi
Dated: November 26, 2012