WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SEPHORA v. Muhammad Furqan
Case No. D2019-2775
1. The Parties
The Complainant is Sephora, France, represented by Saoussen Farhat, France.
The Respondent is Muhammad Furqan, United Kingdom.
2. The Domain Names and Registrars
The disputed domain name < sephorasfameacademy.com> is registered with Network Solutions, LLC (the “First Registrar”). The disputed domain name <sephorasfame.com> is registered with 1&1 IONOS Inc. (the “Second Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2019. On November 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 14, 2019, the First Registrar and on November 18, 2019 the Second Registrar, transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 19, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended to the Complaint. The Complainant filed an amended Complaint on November 21, 2019. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 22, 2019.
The Center verified that the Complaint together with the amended Complaint and the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on November 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2019.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on December 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 was founded in France in 1969 and operates a chain of perfume and cosmetics stores in Europe. The Complainant is the owner of the trademark SEPHORA, registered inter alia as a European Union Trademark No 000788398, covering various goods in the field of cosmetics and related products and services and filed on March 20, 1998.
The Complainant is also running a program named Sephora University to train its personnel in the areas of skin care and cosmetics with sites in Paris, Shanghai and San Francisco.
The disputed domain name sephorasfameacademy.com was registered on August 11, 2017 and the disputed domain name <sephorasfame.com> on January 29, 2016.
5. Parties’ Contentions
The disputed domain names includes the Complainant’s trademark in its entirety, added with the terms “fame” as well as “fame” and “academy”. The Complainant’s trademark is the sole distinctive element in the disputed domain names since they have a merely descriptive role in the disputed domain names.
The Respondent Muhammad Furqan had filed a trademark application for the trademark “Sephoras Fame Sephoras Fame Hair & Beauty Sephoras Fame Hair & Beauty Unisex” on February 8, 2019 but withdrew the application once so requested by the Complainant. The Respondent has not been licensed or otherwise authorized by the Complainant to use the Complainant’s trademark or the disputed domain names. The Respondent is not making any legitimate noncommercial use or fair use of the disputed domain names.
The disputed domain name sephorasfame.com is used to promote a group of beauty salons in London. The disputed domain name <spehorasfameacademy.com> is used to promote online makeup and hairdressing courses.
The Complainant’s trademark enjoys worldwide reputation. The Respondent is well aware of the Complainant’s trademark rights due to the Complainant’s request to withdraw the Respondent’s trademark application mentioned above. By offering same or similar goods and services with the Complainant using the Complainant’s trademark, the Respondent has used and registered the disputed domain names to intentionally attract, for commercial gain, consumers to the Respondent’s websites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain names are identical or confusingly similar to this trademark.
The disputed domain names include the Complainant’s trademark SEPHORA in its entirety, added respectively the terms “fame”, and “fame” and “academy”. These terms are descriptive as they refer to the Complainant’s fame and its goods and services.
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The use of such descriptive terms in the disputed domain names is not sufficient to prevent the confusing similarity between the Complainant’s trademark and the disputed domain names. Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark and hence the first element of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.
It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, and section 2.1 of the WIPO Overview 3.0.
The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the disputed domain names, that the Respondent has no prior rights or legitimate interests in the disputed domain names, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names and is not commonly known by the disputed domain names in accordance with paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain names. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy provides that 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:
“(i) circumstances indicating that [the respondent has] registered or has 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(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.”
The Complainant’s trademarks have been registered and used well before the disputed domain names were registered. Considering that the Respondent is using the disputed domain names to offer goods and services that compete with those of the Complainant, it is evident that the Respondent has been aware of the Complainant and its trademark when adopting the disputed domain names.
The disputed domain names are used to offer goods and services similar to those of the Complainant’s. Moreover, the disputed domain name makes a direct reference to the Complainant’s education service by using the term “academy”, which allures the same image as the Complainant’s use of the term “Sephora University”. The Respondent has also withdrawn its above-mentioned trademark application after a request from the Complainant. It is clear that the Respondent has targeted the Complainant’s trademark and used the disputed domain names in order to create confusion with the Complainant’s trademark in order to attract, for commercial gain, Internet users to the Respondent’s website.
Hence, looking at the overall circumstances of the case, the Panel finds that the disputed domain names were registered and are being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled.
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 names, <sephorasfameacademy.com>, <sephorasfame.com> be transferred to the Complainant.
Date: January 7, 2020