WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Conair Corp. v. "John Doe", Registration Private, Domains by Proxy, LLC / Domain Registration
Case No. D2016-0567
1. The Parties
The Complainant is Conair Corp. of Stamford, Connecticut, United States of America, represented by Gibney, Anthony & Flaherty, LLP, United States of America ("United States").
The Respondent is "John Doe", Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States of America / Domain Registration of São Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <babylissprobrasil.com> 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 March 22, 2016. On March 23, 2016, 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 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 on April 5, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 6, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 28, 2016.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on May 11, 2016. 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 Conair Corporation, an American company with more than 50 years of existence, which nowadays is the owner of 24 brands distributed in the health and beauty products industry. Among those brands are the trademarks BABYLISS, BABYLISSPRO and BABYLISSPRO MIRACURL registered in the United States on March 10, 1981, July 1, 2014 and July 8, 2014.
The Complainant sells to both professionals and final customers, and its products are currently sold in 101 countries, including Brazil. Annually, it manufactures182 million hair accessories and brushes.
The Complainant has offices or subsidiaries in twelve countries including Brazil. It has several authorized websites, though it does not have a local official website for the Brazilian market.
The disputed domain name <babylissprobrasil.com> was registered on August 29, 2014. The website under the disputed domain name used to offer products bearing the Complainant's trademarks, which the Complainant claims were counterfeit.
5. Parties' Contentions
The Complainant contends that the three requirements of paragraph 4(a) of the Policy are met:
1. The disputed domain name is confusingly similar to the BABYLISSPRO trademark owned by the Complainant. The disputed domain name <babylissprobrasil.com> wholly incorporates the Complainant's trademark with the addition of the geographically descriptive term "Brasil", aiming at creating the impression that the disputed domain name is somehow sponsored, endorsed by or affiliated with the Complainant and its trademark. The Complainant further alleges the Respondent uses the disputed domain name to advertise for sale products which bear the Complainant's BABYLISSPRO trademarks, and also illegitimately uses the Complainant's copyrighted images available on the authorized Conair websites, which substantially increases the likelihood of confusion.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or authorized the Respondent's use of these marks in any manner and the Respondent is not commonly known by the disputed domain name. On the contrary, the Complainant has exclusive rights to its registered trademarks, including but not limited to the BABYLISS, BABYLISSPRO and BABYLISSPRO MIRACURL marks and is the exclusive owner of the copyrights for the images used in connection with its authorized websites. The Respondent has not put the disputed domain name to any legitimate use, only trading on the goodwill and reputation of the Complainant.
3. The Respondent has registered and is using the disputed domain name in bad faith. When the Respondent registered the disputed domain name, it was clearly aware of the Complainant's rights, once the Respondent has intentionally attempted to attract, through the likelihood of confusion with the Complainant's trademark, for commercial gain, Internet users to a website which offers for sale counterfeit versions of the Complainant's products. The Respondent is trading upon the popularity and reputation of the Complainant to profit from such confusion by offering for sale counterfeit versions of the Complainant's products.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights". Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has "no rights or legitimate interests in respect of the domain name". Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the "domain name has been registered and is being used in bad faith". Policy, paragraph 4(a)(iii).
A. Identical or Confusingly Similar
The Panel finds that the BABYLISSPRO mark is a widely known mark, including in Brazil and accepts the evidence that the Complainant has established registered rights in the BABYLISSPRO trademark.
The disputed domain name comprises the trademark BABYLISSPRO in its entirety and adds the geographical term "Brasil" and the generic Top-Level Domain ("gTLD") ".com". BABYLISSPRO is the first element of the disputed domain name and is clearly recognizable. Consistent with previous UDRP decisions, the addition of generic terms as well as the gTLD ".com", are insufficient to distinguish a disputed domain name from a complainant's mark.
Particularly in this case, the Panel finds that the addition of the geographical term "Brasil" strongly strengthens the confusing similarity that is likely to arise and misleads consumers into believing the disputed domain name is directly connected to the Complainant.
In light of the above, the Panel finds that the first element of the Policy has been satisfied.
B. Rights or Legitimate Interests
In order for a complainant to prove that a respondent has no rights or legitimate interests in a disputed domain name, previous UDRP panels have consistently held that it is sufficient for a complainant to make a prima facie case (see, amongst others, Croatia Airlines, d.d. v. Modern Empire Internet Limited, WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown by the complainant, the burden of production shifts to the respondent to produce evidence of its rights or legitimate interests in a disputed domain name to the panel.
The Panel's understanding is that the Respondent is not commonly known by the disputed domain name, and it is trading on the Complainant's goodwill and reputation by using the disputed domain name in connection with a commercial website offering what appear to be counterfeit versions of the Complainant's products.
Previous UDRP panels have held that this is not a bona fide offering of goods or services, thus, it is not a legitimate use of a disputed domain name (see Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211; Canon U.S.A., Inc. v. Miniatures Town, WIPO Case No. D2014-0948).
In this regard, the Panel notes that the website at the disputed domain name does not include a disclaimer as to the Respondent's relationship with the Complainant.
The Panel accepts that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Respondent has demonstrated a total knowledge of the Complainant's business and brand, seeking, through the website at the disputed domain name, to pass itself off as the Complainant, while offering for sale counterfeit versions of the Complainant's products, at a lower price. The Panel finds evident that the disputed domain name was registered by the Respondent with the clear intention of passing itself off as the Complainant and trade upon its reputation, which reveals bad faith.
As stated by Cartier International, N.V., Cartier International, B.V. v. David Lee, WIPO Case No. D2009-1758, "it is clear that the Respondent was aware of the Complainant's marks when he registered and started using the disputed domain name, because inter alia the domain name contains the Complainant's mark and the website offers to sell counterfeit imitations of the Complainant's products. Thus the Respondent's use of the disputed domain name is clearly not bona fida". The Panel agrees with this view and understands it is applicable to this case.
Moreover, as previously noted, the website at the disputed domain name does not include a disclaimer in relation to the relationship between the Respondent and the Complainant.
The Panel's understanding is that the Respondent is clearly using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark and thus using the disputed domain name in bad faith.
Therefore, the Panel finds that the third element 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, <babylissprobrasil.com>, be transferred to the Complainant.
Gonçalo M. C. Da Cunha Ferreira
Date: May 23, 2016