WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Angelica Fuentes Téllez v. Domains by Proxy, LLC / Angela Brink
Case No. D2014-1860
1. The Parties
The Complainant is Angelica Fuentes Téllez of Jalisco, México, represented by Garrigues, Spain.
The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States of America (the “USA”) / Angela Brink of Koebenhavn, Denmark, self-represented.
2. The Domain Name and Registrar
The disputed domain name <angelissima.com> (the “Disputed Domain Name”) 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 October 23, 2014. On October 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 24, 2014, 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 the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 5, 2014.
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 the Respondent of the Complaint, and the proceedings commenced on November 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2014. The Respondent sent an email to the Center on November 11, 25 and 26, 2014, the contents of which contained the Respondent's Response.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on December 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 an individual (Angelica Fuentes Téllez) who was born in Ciudad Huarez, Chihuahua, Mexico in 1963, and is a Mexican businesswoman. She is currently the CEO of a Mexican based multinational company, “Grupo Omnilife SA”. One of the divisions of “Grupo Ominilife SA” is the production and distribution of cosmetic products under the ANGELISSIMA trade mark. The Complainant owns registered trade mark rights in ANGELISSIMA since 2008 in several countries.
The Respondent is an individual (Angela Brink), who registered the Disputed Domain Name in 2003 via her company, “Angelissima Catering”. The Disputed Domain Name was then transferred to the Respondent on December 13, 2012. The Disputed Domain Name was then subsequently transferred to the proxy service provider, Domain By Proxy, LLC, on October 21, 2013, but the underlying registrant remained the Respondent.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
(a) The Complainant is a well-known business woman in Mexico and Latin America. Since 2010, the Complainant has been the CEO of the Mexican based multinational company Grupo Omnilife /Angelissima/Chivas, which develops, produces and distributes dietary supplements. The Complainant launched a cosmetic division in Grupo Omnilife SA, under the trade mark ANGELISSIMA. The cosmetic products are distributed under the ANGELISSIMA brand in several countries, including Mexico, the USA, Canada, Spain, etc. The official websites for the Complainant’s cosmetic brand are “www.angelissima.us” and “www.angelissima.com.mx”.
(b) The Complainant has registered trade mark rights in ANGELISSIMA since 2008, including in Mexico, the European Union and the USA (since 2009). The Disputed Domain Name is identical to the Complainant’s trade mark.
(c) The Disputed Domain Name has never been actively used. The Disputed Domain Name was originally registered on January 15, 2003 by “Angelissima Catering”, but was then transferred to the Respondent (Angela Brink) on December 13, 2012. The Disputed Domain Name was subsequently transferred to Domain by Proxy, LLC on October 21, 2013, but the underlying registrant remained the Respondent. The transfer of a domain name to a third party amounts to a new registration.
(d) Based on the Complainant’s Internet research, it appears that the Respondent is a journalist and writer who was born in Canada in 1972. The Respondent’s native language is Danish and English, but she is also fluent in Spanish. The Respondent is also the owner of the domain name <angelabrink.dk>, which the Respondent has been using to promote her professional career. No use has been made by the Respondent of the Disputed Domain Name.
(e) The Respondent holds no registered trade mark rights in ANGELISSIMA. The Respondent is also not a licensee or otherwise affiliated with the Complainant or authorized to use the Complainant’s ANGELISSIMA trade mark. There is no evidence that the Respondent is known by the name “Angelissima”.
(f) According to the Complainant, the Respondent registered the Disputed Domain Name in bad faith as it was registered by the Respondent on October 21, 2013 via a privacy service provider in order to conceal her identity. Further, the Respondent has not used the Disputed Domain Name, and does not even include a link to the Disputed Domain Name from the Respondent’s “www.angelabrink.dk” website. Such passive holding can amount to bad faith registration and use depending on the facts of a particular case. In this case, the Complainant maintains that the Respondent’s passive holding amounts to bad faith registration and use, as there is no evidence of actual or contemplated good faith use of the Disputed Domain Name and, in light of the Complainant’s trade mark rights and business activities, any use of the Disputed Domain Name will inevitably cause consumer confusion and/or infringement of the Complainant’s trade mark.
The Respondent’s contentions can be summarized as follows:
(a) The Respondent owns a catering company called “Angelissima Catering”, which she established in Denmark in January 1, 2003, with her former husband. She has held the Disputed Domain Name since 2003.
(b) The Respondent’s nickname is “Angelissima”, which she has been both privately and publically known as for many years. She is a novelist, poet and media personality in Denmark, as well as a journalist and business woman.
(c) The Respondent alleges not to have violated anyone’s intellectual property rights.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondents in bad faith.
A. Identical or Confusingly Similar
Based on the evidence provided by the Complainant, the Panel is satisfied that the Complainant holds registered trade mark rights since 2008 in the ANGELISSIMA mark in various countries, including Mexico, the European Union and the USA.
The Disputed Domain Name incorporates the Complainant’s ANGELISSIMA trade mark in its entirety. It is a well-established principle that in making an enquiry as to whether or not a trade mark is identical or confusingly similar to a domain name, the domain name extension, in this case “.com”, may be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel therefore finds that the Disputed Domain Name is identical to the Complainant’s mark, and the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if they have acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Respondent is not a licensee nor is it associated with the Complainant in any way that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant’s ANGELISSIMA mark. The Panel further accepts that the Respondent has not provided any evidence to demonstrate a registration of the ANGELISSIMA trade mark anywhere in the world. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Name. In order for the Respondent to establish legitimate interest or right in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, the Respondent must show that it has made use of the Disputed Domain Name for legitimate noncommercial or fair purposes or in connection with a bona fide offering of goods or services.
As a preliminary issue, the Panel notes that the Complainant argues that the transfer of the Disputed Domain Name from the original registrant (Angelissima Catering) to Angela Brink (the Respondent), and then subsequently to Domains By Proxy, LLC, each amounted to a new registration and, therefore, the relevant date of registration to be taken into account is October 21, 2013 (when the Disputed Domain Name was registered by Domains By Proxy, LLC) and not the original registration date of January 15, 2003. Whilst it is well established that the transfer of a domain name to a third party does amount to a new registration, it is also generally accepted that such is not the case where there is evidence to establish an unbroken chain of underlying ownership by a single person, and any change in the WhoIs registrant data is not being made to conceal the underlying owner’s identity. In this case, it appears that the underlying owner is and always has been the Respondent (Angela Brink). The original registrant (Angelissima Catering) was a company established by the Respondent (Angela Brink) and was therefore under her control. Further, both the Complainant and the Respondent appear to have accepted that the Respondent (Angela Brink) is the current underlying registrant. In addition, there appear to be insufficient evidence to establish that the Respondent intentionally tried to conceal her identity – the use of a proxy service provider by itself does not necessarily amount to nefarious intentions. As such, for the purposes of determining whether or not the Respondent has any rights or legitimate interests in the Disputed Domain Name, the Panel finds that it is appropriate to take into account the Respondent’s use of the Disputed Domain Name since the original date of registration (January 15, 2003).
The Respondent submitted several communications stating that her name is “Angela” and that “she has been known in the Danish public as Angelissima because she is a novelist, poet and media personality in Denmark as well as a journalist and business women.”
Although the Disputed Domain Name is currently inactive, the Panel finds that the Complainant's assertion that the Disputed Domain Name has never been in use is incorrect. In accordance with the Panel's powers granted under paragraph 10(a) of the Rules, the Panel found it necessary to conduct its own factual research to enable the Panel to make its decision (see paragraph 4.5 of the WIPO Overview 2.0, which states that “a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name . . . consulting a repository such as the Internet Archive (at www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past...”).
According to the historical screenshots of the Disputed Domain Name, obtained by the Panel from the Internet Wayback Machine, the Panel discovered that from 2004 to 2008, the Disputed Domain Name resolved to a webpage titled “Angelissima Information – Heaven Sent”, and provided details regarding the Respondent (e.g. her professional background, education, qualifications and contact details). In addition, historical screenshots of the Disputed Domain Name taken in February, April and May 2003 by the Internet Wayback Machine also shows that the Disputed Domain Name used to resolve to a webpage entitled “Angelissima Catering København”, which provided information in Danish regarding the catering services offered by Angelissima Catering.
The majority of the Complainant’s arguments relating to rights or legitimate interests revolve around the Respondent’s passive holding of the Disputed Domain Name. However, the Internet archives provide contrary evidence which indicate that the Respondent did use the Disputed Domain Name for 5 years in connection with a bona fide offering of services (i.e. in relation to catering services and her professional services as a journalist). Based on the foregoing, the Panel accordingly finds that the Respondent has a legitimate interest in the Disputed Domain Name, and the fact that the Disputed Domain Name does not currently resolve to an active website does not of itself serve to extinguish such lengthy interest in the circumstances of this case (see Warm Things, Inc., Inc. v. Adam S. Weiss, WIPO Case No. D2002-0085, where the use of the disputed domain name for a period of 2 years was held to constitute use in connection with a bona fide offering of goods or services, irrespective of the fact that the disputed domain name was not in use at the time that the complaint was filed).
The Panel finds that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
In light of the Panel’s finding under the second limb, the Panel need not consider whether or not the Disputed Domain Name was registered and used in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: December 18, 2014