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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jurlique International Pty Ltd v. Jurlique, Buy Jurlique

Case No. D2013-1929

1. The Parties

Complainant is Jurlique International Pty Ltd of Mount Barker, Australia, represented by Latham & Watkins LLP, United States of America.

Respondent is Jurlique, Buy Jurlique of Shanghai, China.

2. The Domain Names and Registrars

The disputed domain name <jurliquebuy.com> is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2013. On November 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On November 15, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 19, 2013, Complainant submitted a request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.

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 Respondent of the Complaint in both Chinese and English, and the proceedings commenced on November 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 13, 2013.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on December 31, 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

Complainant is an international skin care company that markets and sells a prestige line of skin care products. Complainant owns multiple registrations for the trademark JURLIQUE, including notably seven registrations in China. Complainant registered these Chinese trademarks as early as 2007 and no later than 2012.

Respondent registered the disputed domain name <jurliquebuy.com> on September 11, 2013.

5. Parties’ Contentions

A. Complainant

Complainant asserts that Respondent has wrongfully registered the disputed domain name <jurliquebuy.com> such that its Complaint is within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute. Specifically, related to the Policy, Complainant asserts that the disputed domain name is confusingly similar to Complainant’s JURLIQUE mark, that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent has registered and used the disputed domain name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceeding

Complainant has requested that English be recognized as the language of the proceeding. Respondent has not commented regarding the language of the proceeding. Based on Respondent’s use of the English suffix “buy” in the disputed domain name and Respondent’s advertisement of Complainant’s products (labeled in English) on the website at the disputed domain name, the Panel concludes that English should be the language of the proceeding.

B. Standard for UDRP Proceedings

According to paragraph 4(a) of the Policy, for this Complaint to succeed, Complainant must prove each of the following:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name was registered and is being used in bad faith.

C. Identical or Confusingly Similar

The disputed domain name incorporates Complainant’s JURLIQUE mark in its entirety. The disputed domain name only differs from Complainant’s JURLIQUE mark in that it adds the word “buy”. The Panel agrees with Complainant that the suffix “buy” offers no distinctiveness to prevent confusion as it is not material and does not mitigate any potential confusion. (Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792; F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323). The Panel concludes that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in that the disputed domain name is identical or confusingly similar to Complainant’s JURLIQUE mark.

D. Rights or Legitimate Interests

Complainant has averred that Respondent has no trademark rights in the word “Jurlique” and further stated that Complainant, as the owner of the JURLIQUE mark, has never authorized, sponsored, or endorsed the use of the JURLIQUE mark by Respondent. Moreover, the Panel notes that nothing in the record of this case shows that Respondent has been commonly known by the disputed domain name. Respondent has not responded to Complainant’s assertions. The Panel further notes that Respondent only registered the disputed domain name in 2013, while Complainant has used the name “Jurlique” as early as 1985. The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

E. Registered and Used in Bad Faith

Complainant’s long-term use of the JURLIQUE mark, including in China, the location of Respondent, evidences that Respondent likely had actual knowledge of Complainant’s mark. This fact is bolstered, if not proven, by the fact that Respondent offers to sell Complainant’s products (or what appears to be Complainant’s products) on the website at the disputed domain name. Another UDRP panel has also previously found that Complainant has a widespread reputation in the JURLIQUE mark with regard to its products (Jurlique International Pty Ltd v. Domains by Proxy, Inc. / troy ho, WIPO Case No. D2011-1237). Further, in light of Complainant’s multiple registrations of the JURLIQUE mark in China, Respondent most likely had knowledge of Complainant’s mark. In the circumstances, the Panel finds Respondent’s registration of the disputed domain name to be in bad faith.

Further, in light of Respondent’s operation of a website using the disputed domain name incorporating Complainant’s entire mark to sell Complainant’s products (or what appears to be Complainant’s products), the Panel finds that Respondent is attempting to attract customers to its website for commercial gain. The Panel further notes that the website at the disputed domain name does not accurately and prominently disclose Respondent’s relationship with the trademark owner. The Panel finds that Respondent has registered and used the disputed domain name to “intentionally attempt[ed] to attract, for commercial gain, Internet users to [the] web site […] by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the] web site […] or of a product or service on [the] web site […].” Policy, paragraph 4(b)(iv).

Complainant has established that Respondent registered and used the disputed domain name in bad faith, and has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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, <jurliquebuy.com>, be transferred to Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: January 8, 2014

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