WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sephora v. WhoisGuard Protected, WhoisGuard, Inc. / Quan Nguyen Duc
Case No. D2019-1402
1. The Parties
The Complainant is Sephora, France, represented by Domainoo, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Quan Nguyen Duc, Viet Nam.
2. The Domain Name and Registrar
The Disputed Domain Name <sephoravietnam.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 June 18, 2019. On June 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 18, 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 the Complainant on June 19, 2019 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 June 21, 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 the Respondent of the Complaint, and the proceedings commenced on June 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on July 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
The Complainant Sephora is a French company founded in 1969. The Complainant is a well-known chain of perfume and cosmetic stores.
The Complainant is the owner of numerous registrations throughout the world for the trademark SEPHORA including, among others:
- French trademark SEPHORA, Registration No. 1.678.120, registered on July 10, 1991;
- French trademark SEPHORA, Registration No. 00.3023.240, registered on March 20, 1998;
- International trademark SEPHORA, Registration No. 398.767, registered on May 3, 1973; and
- Viet Nam trademark SEPHORA (&Design), Registration No. 238753, registered on July 30, 2013.
The Complainant is also the owner of the following domain names, registered in generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”):
The Disputed Domain Name <sephoravietnam.com> was registered on April 3, 2018.
At the present, the Disputed Domain Name redirects to a web page that says “Welcome to nginx!” However, the Complainant provided evidence that the Disputed Domain Name resolved to a website offering cosmetic products sale and promotion in violation of the Complainant’s trademark.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant alleges that the Disputed Domain Name is similar to the SEPHORA trademark, since the Disputed Domain Name reproduces identically and in entirety SEPHORA trademark with the addition of the geographic term “Viet Nam”.
Moreover, the Complainant states that the geographic term does not differentiate the Disputed Domain Name from the Complainant’s trademark.
The Complainant further summits that the addition of the country’s name would lead Internet users to think that the Disputed Domain Name is an official website of the Complainant in Viet Nam.
Rights or legitimate interests
The Complainant states that the Respondent has no intellectual property rights on a trademark including the word SEPHORA. Moreover, the Respondent has no license or authorization of the Complainant to use a website including the Complainant’s trademark.
In addition, the Complainant has never authorized the Respondent to use the SEPHORA trademark nor to register and to use the Disputed Domain Name.
Finally, the Complainant further alleges that the homepage of the Disputed Domain Name displays several tabs referring to different categories of products, makeup and skin care products. Thus, the Respondent registered the Disputed Domain Name for the sole purpose of attracting the Complainant’s customers, misleading them to a third party website.
Registration and use in bad faith
The Complainant alleges that the Respondent was aware of the Complainant’s trademark since the Complainant filed a warning letter to the Respondent on May 16, 2019.
In addition, the Respondent developed a Facebook page @sephoravn in which it is mentioned the Disputed Domain Name. This clearly shows the desire of the Respondent to take rights on the SEPHORA trademark in the aim of attract the Complainant’s consumers.
Finally, the Respondent has created likelihood confusion with the Complainant’s trademark
The Respondent did not reply to the Complainant’s contentions. However, there is an email from Tung Nguye saying “I don’t own this domain. Why don’t you run whois before contacting me? “Tung Nguyen”.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name in this case:
(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.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Disputed Domain Name <sephoravietnam.com> is confusingly similar to the Complainant’s trademark SEPHORA. The Disputed Domain Name wholly incorporates the Complainant’s trademark in its entirety.
Furthermore, the Disputed Domain Name contains the addition of the geographic term “Viet Nam” which does not prevent a finding of confusing similarity.
Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed 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 organization) 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 noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.”.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights or legitimate interests with respect to the Disputed Domain Name.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered on April 3, 2018, while the Complainant International trademark was granted in the year 1973. This is, 45 years after the Complainant registered its trademark.
The fact the Disputed Domain Name fully incorporates the Complainant’s trademark is clear evidence that the Respondent was well aware of the Complainant’s trademark at the time it proceeded with the registration of the Disputed Domain Name. The Disputed Domain Name is comprised of the well known SEPHORA trademark with the geographical term “Viet Nam”. The use of such term can lead to an inference of being a domain name related to the Complainant’s subsidiary or business in Viet Nam. In addition, many Internet users would suppose that the Disputed Domain Name had been registered by the Complainant or an affiliate of the Complainant to promote the business in Viet Nam.
Moreover, according to the evidence submitted by the Complainant, the Respondent had created a website which resembles the Complainant’s webpage, using the Complainant’s trademark. This clearly shows that the Respondent was well aware of the Complainant’s trademark at the time it proceeded with the registration of the Disputed Domain Name, and that the Respondent registered and used the Disputed Domain Name in bad faith.
The Panel is on the view that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s SEPHORA trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the Disputed Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Name in bad faith.
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 <sephoravietnam.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: August 6, 2019