WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natura Cosméticos S/A and Indústria e Comércio de Cosméticos Natura Ltda. v. Angelos Ellinas
Case No. D2015-0217
1. The Parties
The Complainants are Natura Cosméticos S/A and Indústria e Comércio de Cosméticos Natura Ltda of São Paulo, Brazil, represented by Ricci Advogados Associados, Brazil.
The Respondent is Angelos Ellinas, of Athens, Greece.
2. The Domain Name and Registrar
The disputed domain name <ekos.click> 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 February 10, 2015. On February 10, 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 issued a Complaint Deficiency Notification on February 12, 2015. The Amendment to the Complaint was filed with the Center on February 13, 2015.
The Center verified that the Complaint together with the amendment to 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 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2015. The Response was filed with the Center on March 5, 2015.
The Center appointed William R. Towns as the sole panelist in this matter on March 13, 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 Complainants are Brazilian companies engaged in the manufacture, distribution, and sale of cosmetics and perfumes. The Complainant Natura Cosmeticos S/A, founded in 1969 and headquartered in São Paulo, Brazil, owns trademark registrations for EKOS and uses them in connection with such products in a number of jurisdictions, including Brazil, the United States of America, France, Mexico, and the European Union.1 The Complainant's Community Trade Mark ("CTM") registration for the EKOS mark was issued on February 25, 2008, a United States registration for the EKOS mark was issued on December 30, 2008, and a trademark registration for EKOS (word & design) was issued in Brazil on September 8, 2010. The Complainant also owns registrations for the mark NATURA EKOS in Brazil, the United States, Mexico, and the European Union.
The Respondent registered the disputed domain name <ekos.click> on January 12, 2015. The disputed domain name currently redirects to a landing page at "www.ekos.gr". Screen shots submitted by the Complainant reflect that the disputed domain name previously resolved to a parked page containing sponsored listings, including the Complainant's website as well as websites offering products competitive with those of the Complainant.
5. Parties' Contentions
The Complainant submits that the disputed domain name is identical or confusingly similar to its registered EKOS marks, which the Complainant avers have been used internationally for some fifteen (15) years. According to the Complainant, the disputed domain name reproduces the distinctive and well-known EKOS mark, and the addition of the generic Top-Level Domain (gTLD) <.click> does not distinguish the disputed domain name from the EKOS mark. The Complainant asserts that the Respondent obviously is using the disputed domain name to create consumer confusion and divert Internet users to a parking page with pay-per-click sponsored listings, including links to the websites of the Complainant and the Complainant's authorized consultants, and websites of the Complainant's competitors.
The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant represents that the Respondent is not affiliated with the Complainant and has not been authorized to sell the Complainant's products or to register domain names incorporating the Complainant's marks. The Complainant contends that the disputed domain name is a reproduction of the Complainant's EKOS mark, intended by the Respondent to create Internet user confusion and falsely convey a sense of association or affiliation with the Complainant. According to the Complainant, the Respondent's registration and use of the disputed domain name in this manner violates Intellectual Property Laws, in particular articles1, 3, 6 bis, 6 quinquies, and 8 of the Paris Convention, of which Brazil and Greece both are signatories to.
The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant reiterates that its EKOS mark is well known. The Complainant argues that the Respondent registered and is using the disputed domain name with intent for commercial gain to divert Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's EKOS mark. In addition, the Complainant argues that the Respondent's registration of the disputed domain name prevents the Complainant from registering a domain name reflecting its mark in the ".click" gTLD.
The Respondent asserts that "ekos" is a Greek word for "house", in use for thousands of years, and that the website to which the disputed domain name currently redirects ("www.ekos.gr") has not been uploaded yet, but will be an e-shop for home electronics and appliances. The Respondent submits that the products featured on the website will not match or conflict with the Complainant's products, and that the Respondent will not be trading in countries where the Complainant trades.
The Respondent further submits that responsibility for the "welcome page" with various links rests with Godaddy.com, and is something over which the Respondent has no control. In view of the foregoing, the Respondent concludes "it is clear and obvious" that the Complainant has not been harmed and that the Respondent has no intent to benefit from the Complainant's trademark. The Respondent further states that many more popular gTLDs – such as ".com" and ".net" – are available to the Complainant.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is identical to the Complainant's EKOS mark, in which the Complainant has established rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. Although gTLDs may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. The Complainant has demonstrated rights in the EKOS mark, and the Panel has found that the disputed domain name is identical to the mark. The Complainant has also presented evidence that the Respondent prior to the filing of the Complainant used the disputed domain name in connection with a parked page with advertising links to products (i.e., cosmetics) competitive with those of the Complainant.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a 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 domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent contends that "ekos" is a Greek word meaning "house", in use for centuries, and that the disputed domain name is intended to be associated with a website offering household electronics and appliances. However, the Respondent has offered no evidence that "ekos" in the Greek language is a commonly understood or dictionary word for "house".3 Moreover, even assuming "ekos" may convey this meaning in the Greek language, the Respondent's unsubstantiated assertion that the disputed domain name is intended to be used with a website featuring household electronics and appliances plainly is insufficient to demonstrate preparations to make a bona fide use of the disputed domain name within the meaning of paragraph 4(c)(i) of the Policy.
To the contrary, the only demonstrable use of the disputed domain name reflected in the record before the Panel has been the generation of advertising links related to products of the type offered by the Complainant under its EKOS mark, including links to websites of the Complainant's competitors. Based on the record in this proceeding, the Panel considers it more likely than not that the Respondent was aware of the Complainant's rights in the distinctive EKOS mark when registering the disputed domain name, and that the Respondent did so in order to trade on the goodwill and reputation of the Complainant's marks through the creation of Internet user confusion. Internet users could easily expect that the disputed domain name, which is identical to the Complainant's EKOS mark, would be linked to the Complainant's website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.
In light of the foregoing, the record does not, in the Panel's view, reflect the Respondent's use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Nor, in the circumstances of this case, can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. As noted above, the Respondent has not been authorized to use the Complainant's mark, and there is no indication the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In sum, nothing in the record before the Panel credibly supports a claim by the Respondent of rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The disputed domain name was registered by the Respondent many years after the Complainant adopted and began using EKOS as a designation of source, and well after the Complainant had secured numerous registrations for the EKOS mark, including a CTM registration for the European Union, in which Greece is a member state. The Complainant's EKOS mark is highly distinctive, and the Panel concludes that the Respondent most likely was aware of the Complainant and the Complainant's mark when registering the disputed domain name. For the reasons noted earlier, the Panel considers that the Respondent's primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant's trademark rights through the creation of Internet user confusion.
In light of the foregoing, the record reflects that the Respondent has registered and used the disputed domain name in bad faith. While the Respondent attempts to deny responsibility for or control over advertising links appearing on his website, it is well settled under the Policy that a domain name registrant may be held responsible for content appearing on a website to which the disputed domain name resolves. See WIPO Overview 2.0, at paragraph 3.8 (and cases cited therein).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 names <ekos.click> be transferred to the Complainant Natura Cosméticos S/A.
William R. Towns
Date: March 17, 2015
1 The Complaint does not expressly indicate that the named Complainants Natura Cosméticos S/A and Indústria e Comércio de Cosméticos Natura Ltda are affiliated, although the Panel would be prepared to infer that they are. Regardless, the appendices to the Complaint reflect that Natura Cosméticos S/A is the owner of the registrations for all EKOS and EKOS-formative marks and domain names relied on in the Complaint. The Panel therefore considers the addition of a second Complainant unnecessary. Unless otherwise indicated the term "Complainant" as used in this decision refers to Natura Cosméticos S/A.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.
3 The Panel takes notice that "oikos" is an ancient Greek equivalent to "household" or "house."