WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SGII, Inc. v. New Ventures Services, Corp.
Case No. D2019-2748
1. The Parties
Complainant is SGII, Inc., United States of America, represented by Gowlings WLG (Canada) LLP, Canada.
Respondent is New Ventures Services, Corp., United States of America.
2. The Domain Name and Registrar
The disputed domain name <lipsenseaustralia.com> is registered with Name Nelly LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2019. On November 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on November 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 6, 2019.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on December 16, 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
Founded in 1999, Complainant is a large developer and retailer of cosmetic and personal care products. Complainant operates in several jurisdictions, including the United States of America, Canada, Australia, and the United Kingdom. Since 1999, Complainant has been selling lipstick products under the trademark LIPSENSE. Complainant owns multiple trademark registrations for LIPSENSE, including United States of America trademark registration no. 2362204, registered on June 27, 2000, and Australia trademark registration no. 876143, registered on January 21, 2002.
The disputed domain name was registered on January 4, 2019. The website associated with the disputed domain name consists of pay-per-click links for cosmetic and personal care products, including lip gloss, eyebrow products, and eyeliners. Text on the website indicates that the disputed domain name may be for sale and provides a link for purchasing the disputed domain name.
On April 25, 2019, Complainant sent Respondent via email a letter demanding Respondent transfer the disputed domain name to Complainant. Complainant sent a second letter to Respondent on May 8, 2019. Respondent did not reply to either of Complainant’s letters.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to Complainant’s LIPSENSE mark. According to Complainant, the addition of the term “Australia” in the disputed domain name enhances the likelihood of confusion because Complainant operates and sells its products in Australia.
Complainant further contends that Respondent lacks rights or legitimate interests in respect of the disputed domain name because the disputed domain name resolves to a pay-per-click website that displays sponsored links for products and competitive with Complainant’s products. Complainant also asserts that Respondent is not sponsored or affiliated with Complainant, and that Complainant has not licensed, authorized, or permitted Respondent to register the disputed domain name. Complainant asserts that Respondent is not commonly known by the disputed domain, which further evinces Respondent’s lack of rights or legitimate interests in respect of the disputed domain name. Additionally, Complainant contends that Respondent has not ever used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
As for Respondent’s bad faith, Complainant alleges that Respondent registered the disputed domain name for the purpose of selling the disputed domain name for a fee that exceeds the costs Respondent incurred in registered the disputed domain name. Complainant further alleges that Respondent is intentionally using the disputed domain name to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, or endorsement. Complainant also contends that Respondent’s failure to respond to Complainant’s letters requesting transfer of the disputed domain name evinces Respondent’s bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has established its rights in the LIPSENSE mark by way of its trademark registrations, including Australian registration no. 876143. The disputed domain name is confusingly similar to this mark. The addition of the geographical term “Australia” does not dispel the confusing similarity.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has presented a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which Respondent did not rebut. Complainant has not consented to or authorized Respondent’s use of Complainant’s mark in the disputed domain name. The factual record does not suggest that Respondent is commonly known as the disputed domain name or any portion thereof. Moreover, Respondent’s use of the disputed domain name in connection with a pay-per-click website as done here is not a legitimate or bona fide use. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.9.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent has registered and used the disputed domain name in bad faith. The disputed domain name consists of Complainant’s entire LIPSENSE mark and the term “Australia”, a country where Complainant operates and sells its products. Respondent does not offer, and the Panel is not aware of, any meaning or significance of the term “lipsense” other than as a reference to Complainant’s mark. Therefore, the Panel finds that Respondent most likely knew when it registered the disputed domain name that it was confusingly similar to Complainant’s mark. See WIPO Overview 3.0 (panels may infer actual knowledge of a complainant’s mark where the respondent could not reasonably have been unaware of complainant’s mark). The inclusion of “Australia” in the disputed domain name suggests Respondent registered the disputed domain name in a bad faith attempt to confuse Internet users as to a possible association between the disputed domain name and Complainant, e.g., as an agent in Australia. See Ebel International Limited v. Alan Brashear, WIPO Case No. D2017-0001.
The Panel also finds that Respondent’s use of the disputed domain name in connection with a website with pay-per-click links for products competitive with Complainant’s products, along with the offer to sale the disputed domain name for USD 300, demonstrates bad faith use. Respondent’s failure to respond to the demand letters sent by Complainant is further evidence of bad faith. See Comerica Bank v. Adex Adex, WIPO Case No. D2016-1438.
Complainant has satisfied paragraph 4(a)(iii) 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 <lipsenseaustralia.com> be transferred to Complainant.
Lawrence K. Nodine
Date: December 30, 2019