WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Juvia’s Holdings, LLC, Chinyere Eburu v. Domain Administrator, See PrivacyGuardian.org / Trish French
Case No. D2019-0400
1. The Parties
Complainant is Juvia’s Holdings, LLC and Chinyere Eburu of Secaucus, New Jersey, United States of America (“United States”), represented by Laubscher & Laubscher, United States.
Respondent is Domain Administrator, See PrivacyGuardian.org, of Phoenix, Arizona, United States / Trish French of Vine Grove, Kentucky, United States.
2. The Domain Name and Registrar
The disputed domain name <juviasplaceshop.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2019. On February 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 2019, 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 Complainant on February 22, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 25, 2019.
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 Respondent of the Complaint, and the proceedings commenced on February 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on March 22, 2019. 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
Complainant is the owner of registration for the word trademark and service mark JUVIA’S PLACE on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 5260671, registration dated August 8, 2017, in international class (IC) 35, covering “On-line retail store services featuring cosmetics”, and; registration number 5548457, registration dated August 28, 2018, in ICs 3 and 21, covering, inter alia, cosmetics and cosmetic brushes. Complainant is the owner of various registrations in countries other than the United States for the JUVIA’S PLACE trademark and service mark. Complainant also is the owner of registration for the word trademark JUVIA’S on the Principal Register of the USPTO, registration number 5260666, registration dated August 8, 2017, in ICs 3 and 21, covering “Cosmetics; Cosmetics and makeup; Eye shadows”. Complainant is the owner of various registrations in countries other than the United States for the JUVIA’S trademark. Complainant is also the owner of registration for various JUVIA’S-formative trademarks.1
Complainant markets and sells a line of cosmetic products, inter alia, at a commercial website located at “www.juviasplace.com”.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration for the disputed domain name was created in the name of Respondent on August 20, 2018.
Respondent has established a commercial website at the address of the disputed domain name that essentially replicates the commercial website of Complainant. Respondent’s website replicates Complainant’s JUVIA’S PLACE trademark and service mark in the distinctive style used by Complainant on its commercial website, and it appears to offer Complainant’s products on Respondent’s website (noting that Complainant alleges that at least some of these products may be counterfeit). The website pages of Respondent furnished by Complainant in this proceeding do not contain any indication that Respondent is not affiliated with or is not an authorized reseller of Complainant’s products.
On January 24, 2019, Complainant, through its counsel, transmitted a demand to Respondent’s privacy protection service for the identity of Respondent. Complainant received a response from the Registrar suggesting that Complainant contact Respondent’s website hosting service and consider filing a UDRP complaint.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute resolution under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the trademarks JUVIA’S PLACE and JUVIA’S and that the disputed domain name is nearly identical and confusingly similar to its trademarks.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent does not have the right to use Complainant’s trademarks, and that such use by Respondent creates an association with and/or borrows the goodwill of Complainant, and; (2) Complainant has not authorized Respondent’s use of the disputed domain name, and does not otherwise have a legitimate interest in it.
Complainant contends that the disputed domain name was registered and is being used in bad faith because: (1) Respondent’s website addressed by the disputed domain name includes content and products that are nearly identical to those that are offered on Complainant’s website; (2) the products offered on Respondent’s website are either counterfeit products or Complainant’s products that are being resold without authorization, resulting in consumer confusion and injuring the goodwill and value of Complainant’s trademarks, and; (3) Respondent failed to provide contact information to Complainant.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical address listed in Respondent’s records of registration. Courier records indicate that delivery of the Written Notice to the address of the individual named Respondent was successfully completed. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of ownership of rights in the trademark and service mark (hereinafter “trademark”) JUVIA’S PLACE, including by registration at the USPTO (and in other jurisdictions), and through use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s assertion of rights in its trademark. The Panel determines that Complainant owns rights in the trademark JUVIA’S PLACE.2
The disputed domain name fully incorporates Complainant’s distinctive trademark, adding the common descriptive term “shop” (and eliminating spaces and an apostrophe). Addition by Respondent of the common descriptive term for the establishment (physical or virtual) of a vendor does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s trademark from the standpoint of the Policy. The disputed domain name is confusingly similar to Complainant’s trademark.
The Panel determines that Complainant owns rights in the JUVIA’S PLACE trademark, and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent has used the disputed domain names to direct Internet users to a commercial website that essentially replicates Complainant’s commercial website, including the distinctive design style of Complainant’s website. Such use of Complainant’s trademark without its authorization does not establish rights or legitimate interests in favor of Respondent. 3
Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include: “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location”.
Respondent registered the disputed domain name confusingly similar to Complainant’s distinctive trademark and used it to divert Internet users to a website essentially identical to Complainant’s website operated by Respondent without Complainant’s authorization. Respondent does not appear to have provided any indication on its website that it is a third-party reseller different than Complainant, and it is diverting Internet user traffic from Complainant to itself by creating confusion as to source or affiliation. Respondent has not attempted to rebut Complainant’s evidence of Respondent’s bad faith registration and use of the disputed domain name. The Panel determines that Respondent has used the disputed domain name intentionally for commercial gain to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) 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 name <juviasplaceshop.com> be transferred to Complainant.
Frederick M. Abbott
Date: April 5, 2019
1 Some of the trademark registrations are in the name of the individual named Complainant, and some are in the name of the corporate entity Complainant. Complainant has indicated that the individual is the owner of the corporate entity. The Panel refers to the individual and corporate entity collectively as "Complainant".
2 Complainant has provided substantially similar evidence with respect to ownership of rights in the trademark JUVIA’S, but the Panel does not find it necessary to consider that trademark in this determination.
3 The Panel does not consider it necessary to address the circumstances under which a reseller of legitimate products may refer to a third-party trademark of those products in light of the essentially direct copying of the design, look and feel of Complainant's website, which cannot be considered a fair use of Complainant's trademark. Such replication is deliberately intended to mislead consumers regarding the identity of the product supplier.