WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Essensuals Group Limited v. Funakoshi Co. Ltd / Yume Manabe
Case No. D2014-0903
1. The Parties
The Complainant is Essensuals Group Limited of Middlegreen, Slough, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), represented by Rouse Legal, United Kingdom.
The Respondent is Funakoshi Co. Ltd / Yume Manabe of Ichiharashi, Chiba, Japan.
2. The Domain Name and Registrar
The Disputed Domain Name <essensualslondon.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2014. On May 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 30, 2014, the Registrar 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 June 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2014.
The Center appointed Charné Le Roux as the sole panelist in this matter on July 4, 2014. 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 company incorporated under the laws of England and Wales and is part of the Toni & Guy group of companies, having a business focused on hairdressing and beauty services. The Complainant has been trading under the name ESSENSUALS in the United Kingdom since 1997 and currently operates 27 ESSENSUALS salons in the United Kingdom and 28 international salons, including 2 in Japan where the Respondent is situated.
The Complainant is also the owner of a portfolio of registered trade marks for ESSENSUALS LONDON, registered in the United States of America in August 2013 and for ESSENSUALS, registered under CTM registrations dated July 1998 and September 1999 respectively, in the United Kingdom dated March 2001 and in Japan dated April 2002. The registrations cover a broad range of goods and services relating to hairdressing and beauty.
The Complainant furthermore owns the domain name <essensuals.com>, registered in September 2001 and operates a website at this domain name where its business and ESSENSUALS trade marks are promoted.
The Disputed Domain Name was registered by the Respondent on April 9, 2014.
On April 23, 2014, the Complainant’s representatives wrote to the Respondent and brought to its attention the existence of the Complainant’s rights and seeking transfer of the Disputed Domain Name. There was no response from the Respondent. At that time, the website linked to the Disputed Domain Name, which was in Japanese, related to shirt washing services and had links to third party websites, also in Japanese, that relate to clothing and bags. Those sites display links to further third party sites.
5. Parties’ Contentions
The Complainant asserts that it has been using its ESSENSUALS trade mark for about 17 years in connection with hairdressing and beauty goods and services. The Complainant contends that both the trade marks ESSENSUALS and ESSENSUALS LONDON are famous, and provided evidence from searches that it conducted on Google for the UK that show that all the searches, apart from one that related to the Respondent, were in connection with the Complainant. As mentioned above, the Complainant also submitted information regarding its registered trade mark and domain name portfolios for the marks ESSENSUALS and ESSENSUALS LONDON.
The Complainant contends that the Disputed Domain Name is identical, alternatively confusingly similar to the Complainant’s ESSENSUALS and ESSENSUALS LONDON trade marks. It points out that the Disputed Domain Name wholly incorporates the Complainant’s ESSENSUALS LONDON trade mark, and also that it wholly incorporates its ESSENSUALS trade mark in combination with the geographical indicator “London”, which, according to the Complainant, does not minimize the risk of confusion between the Disputed Domain Name and the ESSENSUALS trade mark.
The Complainant asserts that the Respondent lacks rights or legitimate interest in the Disputed Domain Name in that:
a) the Respondent has not been authorized by the Complainant to use its trade mark ESSENSUALS;
b) the Respondent is not commonly known by the Disputed Domain Name;
c) the Respondent registered the Disputed Domain Name after use and registration of the ESSENSUALS trade marks by the Complainant took place;
d) the Respondent’s use of the Disputed Domain Name is for a commercial purpose, namely to derive revenue from the pay-per-click links to third party websites that appear on the website associated with the Disputed Domain Name;
e) the Respondent’s service offering is not a bona fide offering, in that it selected the Disputed Domain Name with the Complainant’s trade mark in mind in order to maximize the Respondent’s opportunities for pay-per-click income. The Complainant argues that Internet users will not be visiting the website attached to the Disputed Domain Name for the service offerings of the Respondent, but in the hope of visiting the website of the Complainant. In doing so, the Respondent is deceiving Internet users for its commercial success.
The Complainant submits that the Disputed Domain Name was registered and is being used in bad faith, pointing out the Respondent’s failure to respond to its cease and desist letter and which gave it an opportunity to demonstrate a bona fide entitlement to the Disputed Domain Name.
The Complainant also argues that the distinctiveness and repute of the Complainant’s ESSENSUALS and ESSENSUALS LONDON trade marks are so significant that when the Respondent registered the Disputed Domain Name in April 2014, it must have been aware of the Complainant’s trade marks and could not have chosen the Disputed Domain Name at random or for any purpose other than to take unfair advantage of the Complainant’s rights.
The Complainant asserts that by using the Disputed Domain Name in the way set out above, the Respondent is intentionally attempting to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s marks.
The Complainant requests that the Disputed Domain Name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove:
(i) That the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights;
(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 is being used in bad faith.
B. Identical or Confusingly Similar
The Complainant has demonstrated that it has acquired rights in the ESSENSUALS and ESSENSUALS LONDON trade marks, by virtue of its portfolio of trade mark registrations and a domain name for them and its considerable use of the trade marks, not only in the United Kingdom but also internationally, including in Japan where the Respondent is situated.
The Panel finds that the Disputed Domain Name is identical to the Complainant’s ESSENSUALS LONDON trade mark and that the first requirement of paragraph 4(a) of the Policy is satisfied.
C. Rights or Legitimate Interests
The Complainant asserts that its ESSENSUALS and ESSENSUALS LONDON trade marks are famous and that it has not granted the Respondent any rights in respect of the Disputed Domain Name, that the Respondent is not known by the Disputed Domain Name, or has made any legitimate, noncommercial or fair use of the Disputed Domain Name. The Panel finds that the Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy and that there is a case for the Respondent to answer.
The Respondent has not disputed any of the claims made by the Complainant and has not provided any answer. Accordingly, the Panel finds that the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name.
D. Registered and Used in Bad Faith
The Respondent has clearly registered and used the Disputed Domain Name primarily with an intention to capitalize on the reputation attached to the Complainant’s ESSENSUALS and ESSENSUALS LONDON trade marks, by diverting Internet users seeking information about the Complainant to the Respondent’s website, in order to obtain financial reward.
The Respondent had opportunities, both when the Complainant’s representatives sent a cease and desist letter to it and in this administrative proceeding, to demonstrate its rights or legitimate interests, or its good faith conduct, or to challenge the Complainant’s contentions, but it elected not to take up these opportunities.
In accordance with paragraph 4(b)(iv) of the Policy, the Panel is satisfied that there is evidence of registration and use of the Disputed Domain Name in bad faith. There is no evidence displacing this presumption.
The third requirement of paragraph 4(a) of the Policy has been met.
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 <essensualslondon.com> be transferred to the Complainant.
Charné Le Roux
Date: July 18, 2014