WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beiersdorf AG v. Whois Agent, Domain Protection Services, Inc. / Ali Dastan
Case No. D2017-1808
1. The Parties
The Complainant is Beiersdorf AG of Hamburg, Germany, represented internally.
The Respondent is Whois Agent, Domain Protection Services, Inc. of Denver, Colorado, United States of America ("United States") / Ali Dastan of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <niveakesfet.life> (the "Disputed Domain Name") is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 19, 2017. On September 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2017, 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 September 29, 2017 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 amendment to the Complaint on November 2, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 25, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on October 31, 2017. 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 one of the world's leading cosmetic and skin care companies, which has its headquarters in Leverkusen, Germany.
The Complainant does business worldwide, including in Turkey.
The Complainant has numerous trademark registrations for the word NIVEA throughout the world, the earliest of which is German registration 82840 registered on November 9, 1905.
The Complainant has also established Internet web sites located at a number of generic and country code Top Level Domains ("gTLDs" and "ccTLDs") including <nivea.com>.
The Disputed Domain Name was registered on August 8, 2017. The Complainant submitted evidence that it was linked to a webpage in Turkish which visually is very similar to the Complainant's own Turkish website and which makes extensive use of the Complainant's NIVEA trademark and logo. Currently, the Disputed Domain Name does not resolve to an active website.
5. Parties' Contentions
The Complainant's case can be summarised as follows.
a) The Disputed Domain Name is similar to the NIVEA trademark as the word NIVEA is the dominant part of the Disputed Domain Name.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondent uses the Disputed Domain Name in bad faith as it is linked to a website which in substance impersonates the Complainant's website and which would lead consumers to believe the website is that if the Complainant or is authorised or approved by the Complainant.
The Complainant requests that the Disputed Domain Name be cancelled.
No Response has been filed.
6. Discussion and Findings
6.1. Preliminary Issues
As a preliminary issue the Panel notes this is a case where one of the Respondents (Whois Agent, Domain Protection Services, Inc.) appears to be a privacy or proxy registration service while the other Respondent (Ali Dastan) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent".
In the present case the Panel finds the Respondent to be Ali Dastan and references to "the Respondent" are to that person.
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to "employ reasonably available means calculated to achieve actual notice". Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent's failure to file any Response. While the Respondent's failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent's default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
6.2. Substantive Issues
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
i. the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in the Disputed Domain Name;
iii. the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of numerous trademarks for NIVEA.
The Panel concludes that the word NIVEA is the dominant part of the Disputed Domain Name. The Complaint has not explained what the term "kesfet" means but a simple Internet search shows it is a Turkish word meaning "explore" or "discover". It is established that the addition of a descriptive term (such as here "kesfet") to the disputed domain name has little, if any, effect on a determination of identity or confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
It is also well established that the specific top level of the domain name (in this case ".life") does not generally affect the domain name for the purpose of determining whether it is identical or confusingly similar see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
i. before any notice to you of the dispute, your 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. you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are making a legitimate non-commercial 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the NIVEA trademark. The Complainant has prior rights in the NIVEA trademark which precede the Respondent's registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to rebut the Complainant's prima facie case and to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the NIVEA trademark, and the similar nature of the Disputed Domain Name to the NIVEA trademark, and the nature of the website to which the Disputed Domain Name is linked lead the Panel to conclude that the Disputed Domain Name was registered and has been used in bad faith.
In the present case, the Panel concludes that it is inconceivable that the Respondent selected the Disputed Domain Name independently and without knowledge of the Complainant or its products. The website operated by the Respondent at the Disputed Domain Name clearly replicates many elements of the Complaint's own website (in terms of colours used, layout, typeface, images and use of the word NIVEA and associated logo) and is manifestly presented as though it is a website of the Complainant. The evidence is not clear as to exactly how that website is being used and whether it is possible to purchase products via the website but the Panel infers that it is in any event part of a scheme by which the Respondent intends to gain some kind of commercial advantage by confusing visitors into believing that his website is that of the Complainant or is authorised by the Complainant. Deliberate deception of this nature is clearly sufficient to establish registration and use in bad faith. It is a clear example of that specified by the Policy in paragraph 4(b)(iv) namely "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online 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".
Further the Panel notes that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists.
Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all 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 <niveakesfet.life> be cancelled.
Nick J. Gardner
Date: November 13, 2017