WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beiersdorf AG v. Nivea Fitness Center
Case No. D2014-2098
1. The Parties
The Complainant is Beiersdorf AG of Hamburg, Germany, represented internally.
The Respondent is Nivea Fitness Center of Foshan, China.
2. The Domain Name and Registrar
The disputed domain name <sdnivea.com> (the “Disputed Domain Name”) is registered with Guangdong JinWanBang Technology Investment Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2014. On December 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 12, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant.
On December 19, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On December 22, 2014, the Complainant confirmed its request that English be the language of the proceeding. The 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 the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on December 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 22, 2015.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on February 6, 2015. 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 manufactures and markets cosmetics and skincare products under the trademark NIVEA. The Complainant is the owner of numerous international trademarks, including in China, that incorporate the word “NIVEA”. The Complainant provided evidence of these and other marks in Annex 4 to the Complaint. The evidence shows that the Complainant’s registrations of the NIVEA marks began at least as early as 1905. The Complainant also operates over 150 domain names utilizing the NIVEA marks, such as <nivea.com> and <nivea.cn>. The Complainant offered evidence of its ownership of these domain names in Annex 6 to the Complaint.
The Respondent is Nivea Fitness Center of Foshan, China.
The Disputed Domain Name <sdnivea.com> was registered on June 20, 2014.
5. Parties’ Contentions
The Disputed Domain Name is identical or confusingly similar to the Complainant’s NIVEA marks. The Respondent has no rights to or legitimate interests in the Disputed Domain Name. The Respondent registered and is using the Disputed Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
The Complainant has requested that English be recognized as the language of the proceeding. The Respondent has not commented regarding the language of the proceeding. The Complainant submits that it has not been possible to identify the language of the Registration Agreement for the Disputed Domain Name and thus is unable to assess the language of the proceeding on that basis. The Complainant bases its request on the assertion that the Respondent has adapted the English language for the Disputed Domain Name and for the name of its business premises, “Nevia Fitness Center”. Thus, the Complainant asserts that the Respondent has sufficient knowledge of the English language to understand this proceeding. The Panel agrees. The Respondent’s premises and the Disputed Domain Name are in English and are designed to promote the Respondent’s business in English. Taking the foregoing into account, along with the Respondent’s default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceeding.
Where a party fails to present evidence of facts in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004. Insofar as the Respondent has not responded, it is appropriate to accept the facts asserted by the Complainant and to draw adverse inferences of fact against the Respondent. Nonetheless, paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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.
B. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the Disputed Domain Name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is an international company in the field of manufacturing and marketing cosmetics and skincare products. The Complainant adopted the NIVEA mark in 1905. (See Complaint, Annex 3.) The Complainant asserts that is has been using the NIVEA mark extensively since its adoption. As stated above, the Complainant is the registered owner of numerous NIVEA marks in a number of jurisdictions. The Complainant asserts that it has registered the NIVEA marks in more than 170 countries, starting with a German registration in 1905. The Complainant further asserts that the NIVEA marks are registered in the European Union and in China, and has provided selected registration certificates as evidence in Annex 5. Given the Complainant’s extensive history, the Panel finds that the NIVEA marks are distinctive and well-known by the public as indicating the Complainant’s goods, and that the Complainant has rights in the NIVEA marks. Previous UDRP panels have made similar findings. See Beiersdorf AG v. Web4comm Srl Romania, WIPO Case No. DRO2005-0002; Beiersdorf AG v. Nivea International, WIPO Case No. D2001-0178.
The Complainant asserts that the Disputed Domain Name is confusingly similar to its NIVEA marks. The Panel agrees. The Disputed Domain Name incorporates the NIVEA mark in its entirety. It is well established that a domain name is confusingly similar to a mark “when the domain name includes the trademark, or a confusingly similar approximation.” Nicole Kidman v. John Zuccarini, b/b/a Cupcake Party, WIPO Case No. D2000-1415; Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227 (“In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark.”); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
The only difference between the Complainant’s NIVEA marks and the Disputed Domain Name is the addition of the prefix “sd”. The Complainant asserts that this prefix likely stands for Shunde District, which corresponds to the Respondent’s address. The Respondent has not offered any argument to contradict this assertion or show that this inclusion is not non-distinctive or generic. In the absence of a credible explanation, the most likely explanation is that it was chosen with the Complainant’s mark in mind. See Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181. Further, the inclusion of generic content is insufficient to overcome a finding of confusion, particularly where, as here, the dominant feature of the Disputed Domain Name is a well-known mark. Previous UDRP panels have accepted that “[g]enerally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or nondistinctive matter to it.’” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23: 50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446. See also Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423.
Thus, the panel finds that the use of the term “sd” in the Disputed Domain Name does not serve to distinguish the Disputed Domain Name from the Complainant’s NIVEA marks and that it is likely that consumers would be confused by the use of the NIVEA marks in the Disputed Domain Name.
In light of the foregoing, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
C. Rights or Legitimate Interests
The Panel finds there is no evidence in the record to indicate that the Respondent is associated or affiliated with the Complainant or that the Respondent has any other rights or legitimate interests in the term “Nivea”. A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Croatia Airlines d. d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. The Panel finds that the Complainant has successfully presented a prima facie case which the Respondent has not rebutted. The Respondent filed no response. Without a response, there is nothing in the evidence that indicates that the Respondent has a right or legitimate interest in the Disputed Domain Name. Further, as discussed below, the Panel also finds that the Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that the Respondent’s use of the Disputed Domain Name is a legitimate noncommercial or fair use, or that the Respondent is commonly known by the Disputed Domain Name.1
The Panel finds that the requirements of Paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
As discussed above, it is undisputed that the Complainant’s NIVEA marks are distinctive and famous. The record shows that the Complainant owned trademark rights in the NIVEA marks at least a century before the registration of the Disputed Domain Name. Further, the word “Nivea” is a fanciful, rather than a dictionary, term, coined by the Complainant for the purposes of promoting its business. Given this, the Panel finds that the Respondent was likely aware of or should have known of the Complainant’s rights in the NIVEA marks when registering the Disputed Domain Name.
The Disputed Domain Name contains the Complainant’s mark in its entirety. Where a respondent chooses to incorporate a well-known mark into a domain name without authorization, “the combination of an identical trademark in a domain name and the ensuing likelihood of initial interest confusion alone ought to be sufficient to demonstrate that the Respondent has no legitimate interest in this case.” General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645. Further, where the mark is well-known and famous, a trader would not legitimately choose it, “unless seeking to create an impression of an association” with the mark’s owner. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Respondent has not offered any argument to rebut this and the most likely explanation is that it was chosen with the Complainant’s marks in mind. See Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., supra. Given the foregoing, the Panel finds that the Respondent registered the Disputed Domain Name in bad faith.
The Complainant submits that the Respondent is using the Disputed Domain Name to intentionally attract for commercial gain, Internet users, by creating a likelihood of confusion with the Complainant’s NIVEA marks. The Complainant asserts that the Respondent’s bad faith is evidenced by the fact that the Respondent chose a company name, “Nivea Fitness Center”, that contains the Complainant’s NIVEA mark and that the Disputed Domain Name resolves to a website that advertises the Respondent’s fitness studio, which incorporates a word confusingly similar to “Nivea”. As discussed above, given the fame of the Complainant’s NIVEA marks, the most-likely explanation for the Respondent’s inclusion of the NIVEA mark is to trade off of the Complaint’s good-will. The Panel finds that the use of the Disputed Domain Name is in bad faith.
In light of the foregoing, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith. Thus, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <sdnivea.com> be transferred to the Complainant.
Kimberley Chen Nobles
Date: February 20, 2015
1 The Panel notes that the Complainant’s evidence appears to show that the Disputed Domain Name at some point may have advertised a business called “Nevia Fitness Center”. The Registrar has confirmed that the Respondent’s organization name is “Nivea Fitness Center”. However, without more the Panel declines to find that these establish that the Respondent is commonly known by the Disputed Domain Name.