WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FD Management, Inc., Elizabeth Arden, Inc. v. Zhao Jiafei
Case No. D2015-1119
1. The Parties
The Complainants are FD Management, Inc. of Stamford, Connecticut, United States of America and Elizabeth Arden, Inc. of New York, New York, United States of America, represented by Dorf & Nelson LLP, United States of America.
The Respondent is Zhao Jiafei of Huai’an City, China.
2. The Domain Name and Registrar
The disputed domain name <elizabetharden.info> (the “Domain Name”) is registered with OurDomains Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2015. On June 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 1, 2015, 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 July 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 3, 2015.
The Center appointed Geert Glas as the sole panelist in this matter on August 12, 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
Based on the Complainants’ assertions, supported by the documents enclosed as annexes to the Complaint, and undisputed by the Respondent because of its default, the Panel finds the following:
The Complainants are FD Management, Inc., a company organized and existing under the laws of the state of Delaware, and its exclusive trademark licensee Elizabeth Arden, Inc., a company organized and existing under the laws of the state of Florida. FD Management is the owner of eleven US trademark registrations for ELIZABETH ARDEN in connection with numerous goods and services such as toiletries, cosmetics, fragrances and other personal care products. The oldest such trademark was registered in 1951.
The Complainants are also the owners of all common-law rights in the ELIZABETH ARDEN trademarks and the goodwill that is associated with the ELIZABETH ARDEN trademarks.
The Complainants have been using the ELIZABETH ARDEN trademarks to promote their goods and services for more than 100 years. The ELIZABETH ARDEN trademarks have become renowned marks in the beauty and cosmetics industries.
According to the registrar’s WhoIs database, the Respondent registered the Domain Name <elizabetharden.info> on January 21, 2013. The Domain Name contains the two words of which the ELIZABETH ARDEN trademarks consist and only these words. From the Panel’s own research it is apparent that the Domain Name gives access to a parking website redirecting users to advertising links.
The Respondent, a China based company, has on two occasions, respectively on December 20, 2014 and on March 18, 2015, taken the initiative to send an identical email to the Complainant Elizabeth Arden, Inc. offering it to purchase the Domain Name:
We are the manager of international domain name: www.elizabetharden.info
If you want to buy it, please let me know.
The international five largest domain name suffix: com/net/org/biz/info, and the most of multinational companies had generally protected those fixe suffix.
Contact us at […]@hotmail.com or via the whois of domain.
5. Parties’ Contentions
The Complainants request that the Domain Name be transferred to FD Management, Inc. on the following grounds:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights
The Domain Name is identical to the ELIZABETH ARDEN trademarks. Therefore, the Complainants contend that any use of the Domain Name would likely cause confusion amongst consumers who would come across the Domain Name or a website affiliated therewith, since consumers routinely search for sellers of famous products by use of famous trademarks in search engine queries.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainants contend that, upon information and belief, there is no evidence that (i) the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services; (ii) the Respondent has been commonly known by the Domain Name; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Furthermore, the Complainants’ first use and all registrations of the ELIZABETH ARDEN trademarks predate the Respondent’s registration of the Domain Name. The Respondent’s lack of current business interests that makes use of the Domain Name (other than linking it to a site featuring advertising links) illustrates the lack of a legitimate interest in using this Domain Name.
(iii) The Domain Name was registered and used in bad faith
The Complainants contend that the Domain Name was registered by the Respondent primarily for the purpose of selling it to the Complainants, as illustrated by the fact that Respondent sent the Complainant Elizabeth Arden, Inc. two emails, respectively on December 20, 2014 and on March 18, 2015, offering the Domain Name for sale. The submission of requests to purchase a domain name that is identical to the Complainants’ registered trademarks is evidence of bad faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainants prove each and all of the following three elements in order to be successful in these proceedings:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have demonstrated that they are the owner of numerous registered trademarks for the name “Elizabeth Arden” in the United States.
The Domain Name incorporates the two words of the Complainants’ trademark in their entirety and only these words. Only the generic Top-Level Domain (gTLD), “.info”, is different. Several UDRP panels have held that wholly incorporating a complainant’s registered trademark in a domain name may be sufficient to establish confusing similarity for the purposes of the Policy, particularly where the trademark is highly recognizable and famous (see, e.g., AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
Furthermore, the addition of the gTLD “.info” is not usually an element of distinctiveness taken into consideration when evaluating the identity or confusing similarity of a complainant’s trademark and a domain name, because Top-Level Domains are a required element of every domain name (see, e.g., 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; and Qantas Airways Limited v. Minh Huynh, WIPO Case No. D2008-1382).
Accordingly, the Panel finds that the first element under paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., Document Technologies Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Dow Jones & Company and Dow Jones LP v. The Hephzibah Intro-Net Project Limited, WIPO Case No. D2000-0704 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).
The Panel finds that the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Indeed, based on the evidence submitted by the Complainants, the Panel finds that there is no evidence that the Respondent has been commonly known by the Domain Name, has made a legitimate noncommercial use of the Domain Name or has used the Domain Name in connection with a bona fide offering of goods or services.
Moreover, the Respondent has failed to respond to the Complaint and has therefore failed to provide any evidence of its rights or legitimate interests in the Domain Name (see, e.g., The Great Eastern Life Assurance Company Limited v. Unasi Inc, WIPO Case No. D2005-1218; Stanworth Development Limited v. Mike Morgan (290436), WIPO Case No. D2006-0230).
Finally, pursuant to Paragraph 10(a) of the Rules, the Panel considers itself competent to independently visit the Internet in order to obtain additional information in a default proceeding (see InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076and Cortefiel, S.A. v. Javier García Quintas, WIPO Case No. D2000-0141). On August 31, 2015, the Panel visited the “www.elizabetharden.info” website in order to investigate whether any evidence could be found as to the Respondent’s rights or legitimate interests in the Domain Name. The Panel did not find any such evidence. To the contrary, from the Panel’s own research it is apparent that the Domain Name gives access to a parking website redirecting the users to commercial sites such as “www.showroomprivé.com”.
In view of the above, the Panel finds that the use made by the Respondent of the Domain Name clearly indicates that the Respondent’s primary intention is to unfairly exploit the goodwill of the Complainants’ ELIZABETH ARDEN trademarks, and that such use cannot be considered to be a “legitimate and noncommercial or fair use of the domain name” in accordance with paragraph 4(a)(ii) of the Policy.
Based on the evidence provided by the Complainant and the Panel’s investigation, the Panel finds that the second element under paragraph 4(a)(ii) of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel turns to the question of whether the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy describes some circumstances which, if found to exist, will be evidence of the registration and use of a domain name in bad faith. They are presented in the alternative and consist of a non-exhaustive list of indicia of 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 that 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 web site 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 web site or location or of a product or service on your web site or location.
i) Registered in Bad Faith
Given that the ELIZABETH ARDEN trademarks are well-known and widely used, the Panel is of the view that it is highly unlikely that the Respondent did not know of the Complainants’ trademarks at the time the Domain Name was registered. Indeed, according to the registrar’s WhoIs database, the Respondent registered the Domain Name on January 21, 2013, almost 62 years after the Complainants’ first ELIZABETH ARDEN trademark registration.
Several UDRP panels have ruled that bad faith is established where a complainant’s trademark has been shown to be well-known or in wide use at the time of registering a domain name (see e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; and Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435).
Furthermore, with respect to paragraph 4(b)(i) of the Policy, there is no question that an offer to sell the Domain Name to the Complainants was made. Indeed, respectively on December 20, 2014 and on March 18, 2015, the Complainant Elizabeth Arden, Inc. was contacted by the Respondent to purchase the Domain Name. Previous UDRP panels have found that the submission of requests to purchase a domain name that is identical to the Complainant’s registered trademarks is evidence of bad faith (see The Richards Group, Inc. v. Click Here! Inc., WIPO Case No. D2000-0171and Aurora Foods Inc. v. David Paul Jaros, WIPO Case No. D2000-0274). While this offer does not as such prove that this intention to sell the Domain Name to the Complainants was already present at the time of registration, the fact that the Respondent has made no proper use of the Domain Name, the fact that there is no link between the Respondent’s name or businesses and the Domain Name and the fact that the Domain Name exactly matches the Complainants’ mark and was registered after the Complainants had launched their “www.elizabetharden.com” website, all point in this direction. Under these circumstances, the Panel finds that on balance the circumstances support the conclusion that paragraph 4(b)(i) of the Policy is applicable (see The Richards Group, Inc. v. Click Here! Inc., supra).
ii) Used in Bad Faith
As the Domain Name is “parked free” and used to generate sponsored links or “related searches”, the Panel finds that the Respondent attempts to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainants’ trademarks. Previous UDRP panels have recognized that the use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy above (see Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556). It does not matter whether the Respondent is the beneficiary of these commercial gains or whether the commercial gains accrue elsewhere. It is sufficient that a third party stands to reap the profits of the Respondent’s wrongful conduct (see Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912).
Moreover, the Respondent’s failure to respond to the Complainants’ contentions and as a result to provide any evidence whatsoever of any good faith use of the Domain Name is an additional indication of bad faith (News Group Newspapers Limited and News Network Limited v. Momm Amed la, WIPO Case No. D2000-1623, Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598, and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460).
In light of the above, the Panel concludes that the Domain Name was registered and is being used in bad faith.
Accordingly, the Panel finds that the third element under paragraph 4(a)(iii) of the Policy has been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <elizabetharden.info> be transferred to the Complainant FD Management, Inc.
Date: September 2, 2015