WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Makeup Art Cosmetics Inc. and Estee Lauder Cosmetics Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / Ray Johnson
Case No. D2019-0516
1. The Parties
Complainants are Makeup Art Cosmetics Inc., Unites States of America (“United States” or “U.S.”) and Estee Lauder Cosmetics Ltd., Canada, represented by Fross Zelnick Lehrman & Zissu, PC, United States.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Ray Johnson, United States.
2. The Domain Name and Registrar
The disputed domain name <maccosmeticsfranchising.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2019. On March 7, 2019, 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 Complainants on March 11, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on March 13, 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 March 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 10, 2019.
The Center appointed Andrew Mansfield as the sole panelist in this matter on April 24, 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
Complainants are Makeup Art Cosmetics Inc. and Estee Lauder Cosmetics Ltd, respectively a U.S. and a Canadian corporation, world leaders in the field of cosmetics operating in more than 100 countries, among which is Pakistan, the country in which individuals reside who have been sent emails ending in the disputed domain name.
Complainants make and sell cosmetics under the MAC and MꞏAꞏC marks (“the MAC marks”). They have done so for over thirty years. They are the owners of more than 400 trademark registrations for MAC (e.g., U.S. trademark registration no. 1642532, registered on April 30, 1991). Complainants provided evidence in support of the above-mentioned trademark registrations.
Complainants also own several domain names, among which are <maccosmetics.com>, <maccosmetics.co.uk>, <maccosmetics.fr>, <maccosmetics.com.au>, <meccosmetics.ca>, <maccosmetics.co.kr>, <maccosmetics.co.jp>, <maccosmetics.com.cn>, <maccosmetics.at>, <maccosmetics.dk>, <maccosmetics.it>, and many others reflecting various geographic locations.
The disputed domain name <maccosmeticsfranchising.com> does not resolve to an active website but has been used in connection with emails. It has been used in connection with emails originating from [...]@maccosmeticsfranchising.com.
5. Parties’ Contentions
Complainants allege that they are among the world’s leading cosmetics companies. They have sold cosmetics under the MAC Marks for more than 30 years. MAC cosmetics are available in over 2,700 outlets, including various retail stores, and online. The MAC brand is one of the world’s top 5 prestige cosmetics brands with global yearly sales in the billions of dollars.
Complainants do not offer franchising opportunities via email to prospective franchisees. The MAC Marks have been used extensively in all regions of the world, including Pakistan, and have received wide press coverage. The MAC Marks are among the most famous in the world and are widely recognized world-wide.
Among many other sites, Complainants maintain a fully functional e-commerce site for Complainants’ products at <maccosmetics.com>. Products have been offered on that site since 2000.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding Complainants must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark of Complainant; (ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel holds that the applicable standard of proof is one based on the “preponderance of the evidence”.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the 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.
In accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel considers it important for the overall credibility of the UDRP system that parties can reasonably anticipate the result of any potential case. The Panel is committed to striving for consistency with prior decisions while maintaining sufficient flexibility to account for changing practices or new fact patterns that may arise.
A. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name is confusingly similar to various trademarks associated with Complainants. The disputed domain name entirely incorporates the mark MAC. It includes the MAC mark in association with the term “cosmetics”, the industry with which the mark is most associated. The disputed domain name then adds the word “franchising”, an activity in which the company does engage, though not by email. The generic Top-Level Domain (“gTLD”) “.com” should typically be disregarded under the first UDRP element.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name integrates Complainants’ MAC trademark in its entirety (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345).
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.7. The Panel concludes under this test that the disputed domain name is confusingly similar to Complainants’ trademarks for purposes of the first element of the Policy. The first element of the Policy has been met.
B. Rights or Legitimate Interests
The Panel does not lightly or automatically find that Respondent has no rights or legitimate interests. Even when a respondent fails to participate in a UDRP dispute, the complainant is required to make out at least a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden shifts to the respondent to demonstrate rights or legitimate interests under the Policy. See WIPO Overview 3.0, section 2.1. If the respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied the second element of the Policy.
Complainants have made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Complainants indicate that Respondent was not licensed or authorized to use the trademark at issue or any variation thereof. Respondent has not, as far as Complainants can find, been commonly known by a name identical or similar to the disputed domain name. Respondent has not come forward with any appropriate allegations or evidence in this regard. Based on the evidence presented, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain name.
The second element of the Policy has, therefore, been met.
C. Registered and Used in Bad Faith
The Policy provides guidance on activities that might be considered evidence of bad faith registration and use of a domain name. That guidance is found in paragraph 4(b) of the Policy. Circumstances are described in paragraph 4(b) that might lead a panel to conclude that the registration and use of a disputed domain name is in bad faith. The description of the circumstances is addressed to the respondent. They are:
(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 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 your website or location or of a product or service on your website or location.
Previous panels have found that registration of a domain name obviously or patently connected with a complainant suggests opportunistic bad faith. See Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492. The registration and use of <maccosmeticsfranchising.com> in this matter makes use of its obvious similarity to domain names used by Complainants. The disputed domain name was registered at least 30 years after Complainants first used their MAC mark. Given Complainants’ worldwide reputation and fame, Respondent was or should have been aware of the mark prior to registering the disputed domain name. This conclusion is further supported by the fact that the disputed domain name was incorporated into email intended to induce recipients in Pakistan (and perhaps other middle eastern markets) to believe they could apply to be a franchisor of Complainants. Such a sequence of events cannot be unintentional.
In this matter, the Panel notes that a review of the emails received by various third parties to induce them to expend funds to become a franchisor of Complainants indicates that Respondent attempted to obtain funds from third parties under false pretenses by the use of email ending in the disputed domain name. Respondent or an agent for Respondent transmitted false emails to offer and follow up on franchising opportunities allegedly made by Complainants. This illusion was created through the use of email addresses ending in the disputed domain name. Through this use of the disputed domain name, the Panel concludes that Respondent hoped to confuse and mislead one or more members of the public through a false belief the email originated from Complainants. This harmed Complainants’ reputation and tarnished the marks.
The disputed domain name was used to facilitate a phishing scheme. The potential success of the phishing scheme was predicated on the possibility that one or more recipients not recognizing that the disputed domain name was not a domain name owned by Complainants. For the average recipient, this was all but guaranteed to be the case given the intentional similarity of the disputed domain name to Complainants’ marks.
Prior UDRP panels have agreed that there is no stronger evidence of bad faith than a fraudulent phishing scheme set up with the help of a domain name containing the trademark of a company where recipients of email are being misled and deceived into believing they are dealing with an authorized representative of the company to whom the disputed domain is confusingly similar. See OLX, Inc. v. J D Mason Singh, WIPO Case No. D2014-1037; and The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093.
The third element of the Policy has been met.
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 <maccosmeticsfranchising.com> be transferred to Complainant.
Date: May 27, 2019