WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Makeup Art Cosmetics Inc., Estee Lauder Cosmetics Ltd. v. Buofu Nwafor
Case No. D2019-1099
1. The Parties
Complainants are Makeup Art Cosmetics Inc., United States of America, and Estee Lauder Cosmetics Ltd., Canada (hereinafter collectively “Complainants”) represented by Fross Zelnick Lehrman & Zissu, PC, United States of America (“U.S.”).
Respondent is Buofu Nwafor, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <maccosmeticfranchise.com> (the “Domain Name”) is registered with OwnRegistrar, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2019. On May 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 14, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on May 20, 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 May 22, 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 May 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 14, 2019.
The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on June 25, 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, including their affiliated companies, are among the world’s leading cosmetics companies. For more than 30 years they have made and sold cosmetics under their MAC and M·A·C trade marks (“Complainants’ MAC Mark”). Currently, Complainants branded cosmetics are sold in more than 100 countries, including in Nigeria, where the original registrant is located.
Complainants’ cosmetics have been available in European Union since 1993. It opened its first MAC boutique in European Union in 1996; and in Nigeria in 2013. Complainants’ cosmetics are available in over 2,700 outlets worldwide, including free-standing stores, in high-end department stores, online via Complainants’ own websites, and through authorized third-party internet retail websites, under Complainants’ MAC Mark.
Complainants’ MAC Mark has been registered in more than 100 countries. Complainants own more than 400 trade marks registrations for trade marks that include the Complainants’ MAC Mark around the world. The U.S. trade marks that include MAC are in the name of Estee Lauder Cosmetics Ltd. (Canada) and the international trade marks that include the name MAC are in the name of Makeup Art Cosmetics, Inc. These entities are both wholly owned by the same corporate parent.
Complainants offer more than 1,000 products, including various color cosmetics, foundation, makeup tools, skincare products, and fragrances. Every product prominently bears Complainants’ MAC Mark including product packaging such as bags, signage, business cards and letterhead.
To further ensure that only genuine MAC products are offered to consumers, Complainants sell their MAC branded products exclusively through authorized retailers, authorized distributors, through their own MAC stores, or through authorized free-standing MAC stores operated on behalf of MAC.
Currently, outside of the U.S. there are approximately 3,839 authorized distributors selling Complainants’ MAC products, including in European Union and Nigeria.
According to the publicly available WhoIs the Domain Name was registered on March 18, 2019 and used to generate fraudulent emails.
5. Parties’ Contentions
Complainants contend that as at the Domain Name’s registration on March 18, 2019, they had been using Complainants’ MAC Mark for more than 30 years internationally, more than 20 years in European Union, and more than 5 years in Nigeria. They also had a full line of cosmetics available internationally under Complainants’ MAC Mark, had trade mark registrations in more than 100 countries, including European Union and Nigeria.
Complainants say that they have strong rights in Complainants’ MAC Mark based on their use of MAC in and as part of a trade mark since 1985, their use of the Complainants’ MAC Mark on beauty products sold throughout the world, their web presence at “www.maccosmetics.com”since 2000 and their more than 400 trade marks registrations.
Complainants also contend that their products routinely receive editorial coverage from publications around the world including the European publications Grazia, Joy, Beauty & Health, and Diva; and Nigerian publications GMPosts.com, beautyinlagos.com and NigerianFinder.com.
Complainants’ MAC Mark is also consistently used in connection with the promotion and sponsorship of events including, for example, tents and events at awards ceremonies shown around the world.
Before registration of the Domain Name, ads for Complainants’ MAC products also appeared at Facebook, Instagram and YouTube, as well as on various internet sites including on the “www.out.com”, “www.billboard.com”, “www.last.fm”, “www.pandora.com”, “www.nytimes.com” and “www.vevo.com” websites. These sites are available worldwide.
Complainants assert that the Domain Name incorporates Complainants’ MAC Mark in its entirety with the addition of the terms “cosmetic” and “franchise”. These terms do nothing to distinguish the Domain Name from Complainants’ MAC Mark as they are generic and relate to the goods and business of Complainants. The Domain Name uses the Complainants’ MAC Mark in a manner that mirrors Complainant’s own authorized websites and domain registrations which use MAC followed by otherwise generic terms.
Complainants assert that Respondent is using an email address associated with the Domain Name, <,,,@maccosmeticfranchise.com>, to solicit for money in exchange for the opportunity to apply to operate a “MAC Franchise.”
Complainants state they have received reports of such solicitations being sent to prospective applicants. Respondent has falsely claimed to be the Senior Vice President Global General Manager International Franchise Director for MAC Cosmetics – The Estée Lauder Companies Inc. and has sent emails to prospective franchise operators looking to open a MAC Cosmetics franchise store. Complainants acknowledge that whilst Mr. Pinatel is the name of the actual Senior Vice President, Global General Manager, M·A·C Cosmetics, they state that Mr. Pinatel did not send the emails and nor did he authorize those messages to be sent on his behalf.
Complainants point out that they do not offer franchise opportunities to prospective partners via email, and claims that Respondent’s use of the Domain Name and the related email address is for a fraudulent scheme designed to trade on the fame of Complainants’ MAC Mark.
Complainants assert that there has never been any relationship between Complainants and Respondent and nor has there been any license, permission or authorization for Respondent to use or register the Domain Name.
Because the ultimate effect of any use of the Domain Name will be to cause confusion with Complainants, the use and registration of the Domain Name is in bad faith.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainants have for more than 30 years made and sold cosmetics under Complainants’ MAC Mark. Currently, Complainants’ cosmetic products are sold in more than 100 countries, including in Nigeria. Complainants’ MAC Mark has been registered in more than 100 countries. Complainants have therefore established to the satisfaction of the Panel that Complainants’ MAC Mark has been used and registered and that Complainants have for many years marketed and sold, inter-alia, cosmetic products under and by reference to Complainants’ MAC Mark.
The Domain Name incorporates Complainants’ MAC Mark in its entirety with the addition of the descriptive English terms “cosmetic” and “franchise”, neither of which distinguish the Domain Name from Complainants’ MAC Mark. They are descriptive and generic terms that relate to Complainant’s goods and business.
Respondent has not explained why it chose the Domain Name. In the absence of such explanation, it is found that:
a) Complainants have rights in respect of Complainants’ MAC Mark.
b) The Domain Name is confusingly similar to Complainants’ MAC Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
In terms of whether Respondent has rights or legitimate interests in the Domain Name, Complainants contend that Respondent is using an email address associated with the Domain Name, <...@maccosmeticfranchise.com>, to solicit for money in exchange for the opportunity to apply to operate a “MAC Franchise”, notwithstanding the fact that there has never been any relationship between Complainants and Respondent.
Again, in the absence of any response or explanation as to why Respondent is conducting itself in this manner, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is therefore satisfied that the second element of the Policy has been met.
C. Registered or Used in Bad Faith
Given Complainants’ use and registration of Complainants’ MAC Mark, and its repute both internationally and in Nigeria, the Panel infers that Respondent knew of Complainants’ MAC Mark when registering the Domain Name.
The Panel finds that Respondent registered and is using the Domain Name to take bad faith advantage of Complainants’ long-standing interest in Complainants’ MAC Mark, at the time of registration of the Domain Name and since by sending fraudulent emails to take advantage of Complainant’s trade mark. The Domain Name consists of Complainants’ MAC Mark accompanied by two descriptive and generic terms associated with or likely to be used by Complainants. As a result, Internet users might reasonably believe that the Domain Name is somehow associated with or endorsed by Complainants, contrary to the fact.
The Panel thus finds that the third limb 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 Domain Name <maccosmeticfranchise.com> be transferred to Complainants.
Clive L. Elliott QC
Date: July 15, 2019