WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Creative Nail Design, Inc. v. Arunas Bruzas, Shellac Limited and CND Shellac Limited
Case No. D2015-0158
1. The Parties
The Complainant is Creative Nail Design, Inc., of San Diego, California, United States of America, represented by Gill Jennings & Every, the United Kingdom of Great Britain and Northern Ireland.
The Respondents are Arunas Bruzas, Shellac Limited and CND Shellac Limited of London, United Kingdom of Great Britain and Northern Ireland (the "Respondent").
2. The Domain Name and Registrar
The disputed domain name <cnd-shellac.net> is registered with 1&1 Internet AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 30, 2015. On February 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 February 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on March 4, 2015.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on March 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.
The Panel noted that due to an administrative oversight, it appears that the document entitled "Notification of Complaint and Commencement of Administrative Proceeding" was not copied to the email address "email@example.com". On March 24, 2015, the Panel has issued the Procedural Order No. 01, notifying the Respondent of the document entitled "Notification of Complaint and Commencement of Administrative Proceeding", and the Complaint (including annexes), and allowing the Respondent a period of five (5) days to indicate whether it wished to submit a response. As the Respondent did not timely respond to the Panel's Procedural Order No. 01, the Panel has continued to render its decision.
4. Factual Background
The Complainant has submitted evidence that it is the owner of a large number of trademark registrations in numerous countries for CND SHELLAC including:
US trademark registration with registration No. 4340079, filing date April 27, 2011 and registration date May 21, 2013.
UK trademark registration with registration No. UK00002582298, filing date May 24, 2011 and registration date August 26, 2011.
The disputed domain name <cnd-shellac.net> was registered on June 23, 2014.
5. Parties'' Contentions
The Complainant is a world leader in professional nail, hand and foot beauty, incorporated under the laws of California in USA since 1979. The Complainant is an indirect subsidiary of Revlon Consumer Products Corporation, which owns the REVLON trademark
Following four years of development and spending several millions of US dollars, the Complainant launched internationally a new line of cosmetic longwear nail color products under the trademarks CND and SHELLAC in 2010. This range represented a revolution in the field of manicures and is based on a method using the Complainant's unique patented technology. The Complainant's 14+ day nail color system was launched in the UK in April 2010.
Prior to the Complainant's CND SHELLAC range there were two main methods used in manicure: (i) nail polishes or enamels, which are removable but may chip or smudge within days after application; and (ii) nail enhancers (artificial nails), which can be applied by the use of gels, liquid and powders, or alternatively, acrylic clip-on nails. Typically, gels are not easily removed and require prior nail preparation which includes filing the surface of the nail for later removal. The Complainant's CND SHELLAC branded product is applied like a polish and wears like a gel, but is removable like a polish. The products are designed to be applied by nail professionals in salons to ensure proper application and curing of the nail color system.
Shortly after launch the Complainant's product enjoyed wide media coverage. For instance, the US magazine "People" selected the Complainant's SHELLAC manicure system as one of the "Five Top Trends" of autumn 2010 in the USA and it was also named one of the United States' hottest brands. In addition, the Complainant's product range received positive media coverage in a wide variety of American media, including The New York Times, Yahoo, Huffington Post, NBC's Today Show, Glamour, The Oprah Magazine, Better Homes & Gardens, InStyle, Woman's Day, Ladies' Home Journal, Star, In Touch and Flare. The Complainant's product has also received a wide exposure through celebrities, such as Lady Gaga, Rihanna and Heidi Klum, who have used it and offered positive comments.
The Complainant owns more than 450 trademark applications and registrations around the world for the marks SHELLAC and CND SHELLAC as well as other marks incorporating those elements. In light of the Complainant's extensive use of the trademarks CND and SHELLAC, the Complainant's marks are well-known marks under Article 6bis of the Paris Convention and, in addition to the registered rights, the Complainant also claims unregistered rights in those marks.
The Complainant first became aware of the Respondent in October 2014. A test purchase of the products offered for sale by the Respondent at the time was conducted. The Complainant confirmed that the Respondent sold counterfeit CND SHELLAC-branded products via at least two websites, one of them being hosted under the disputed domain name <cnd-shellac.net>.
The Complainant sent a letter to the Respondent on November 11, 2014 regarding trademark infringement, passing off and criminal counterfeiting. Shortly afterwards, the websites were taken down. The Complainant sent a second letter to the Respondent on November 26, 2014 requesting that the disputed domain name should be transferred to the Complainant. The Respondent did not reply.
The disputed domain name is confusingly similar, if not identical, to a number of the Complainant's trademarks, including but not limited to the UK trademark registration CND SHELLAC and the US trademark registration CND SHELLAC. The addition of a hyphen between CND and SHELLAC in the disputed domain name is not a distinguishing feature because it is a simple punctuation mark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no relationship with the Complainant and the Complainant has not authorized the Respondent to use the CND SHELLAC trademarks in any way. The Respondent had knowledge of the Complainant's rights since the disputed domain name was registered after the Complainant had commenced use of, filed trademark applications and secured trademark registrations, including the CND SHELLAC trademark in the UK. The Respondent has not used the disputed domain name in connection with a bona fide offering, bearing in mind that counterfeit products were sold. The Respondent is not commonly known by the disputed domain name.
Considering the Respondent's counterfeiting, the Respondent has been making an illegitimate commercial and unfair use of the disputed domain name, with intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark at issue.
Given the distinctive and well-known nature of the CND SHELLAC trademark in relation to nail care products, it is virtually inconceivable that the Respondent registered the disputed domain name in order to sell counterfeits without being aware of the existence of the Complainant's trademarks. Using the disputed domain name to sell counterfeit products constitutes bad faith.
The Respondent has registered and is using the disputed domain name, which incorporates the Complainant's trademark, in order to masquerade as the Complainant, to misappropriate the goodwill of the Complainant, to hijack the Complainant's reputation for personal gain and to redirect Internet traffic intended for the Complainant for its own purposes.
The Respondent's lack of any apparent legitimate purpose for registration suggests that the registration and use of the disputed domain name is solely an attempt to capitalize on the goodwill of the Complainant's trademark.
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 each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark CND SHELLAC. The disputed domain name <cnd-shellac.net> incorporates the trademark in its entirety although the first part CND is separated from the second part SHELLAC by a hyphen. Hyphens are commonly used to replace the "space" character in domain names due to technical restrictions. Thus, the addition of the hyphen in the disputed domain name makes little, if any, difference in the similarity and identity analysis. See Dreamworks L.L.C. v. Carol Maleti, WIPO Case No. D2003-0548.
Having the above in mind, the Panel concludes that the disputed domain name <cnd-shellac.net> is confusingly similar to the Complainant's trademark CND SHELLAC and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has used or made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to any notice of the dispute; or
(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark or service mark rights; or
(iii) that it 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 trademark or service mark at issue.
The Complainant has not licensed or otherwise consented to the Respondent's use of the trademark CND SHELLAC in connection with the disputed domain name <cnd-shellac.net>, which is confusingly similar to the Complainant's trademark.
It has been argued by the Complainant that the disputed domain name has been used by the Respondent to sell counterfeit products and the Complainant has submitted evidence to support its claim. Thus, the evidence in the case indicates that the Respondent is neither making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that it is commonly known by the disputed domain name.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant's submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:
(i) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
The Complainant's CND SHELLAC trademark registrations for nail care products predate the registration of the disputed domain name <cnd-shellac.net>. Considering that the Respondent used the disputed domain name to sell counterfeit CND SHELLAC nail care products, the Respondent must have had the Complainant's business and trademarks in mind at the time of registration. The Complainant sent several letters to the Respondent requesting that the Respondent should accept to transfer the disputed domain name to the Complainant but the Respondent did not reply.
Thus, the evidence in the case before the Panel indicates that the disputed domain name <cnd-shellac.net> has intentionally been registered and used in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.
There is no evidence in the case file that refutes the Complainant's submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name <cnd-shellac.net> has been registered and used in bad faith.
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 <cnd-shellac.net> be transferred to the Complainant.
Date: March 30, 2015