WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Estee Lauder Inc., Estee Lauder Cosmetics Ltd., and Makeup Art Cosmetics Inc. v. Walter C. Parker and Carol F. Morris
Case No. D2020-0593
1. The Parties
The Complainants are Estee Lauder Inc., United States of America (“US”), Estee Lauder Cosmetics Ltd., Canada, and Makeup Art Cosmetics Inc., US, represented by Fross Zelnick Lehrman & Zissu, PC, US.
The Respondent is Walter C. Parker, Netherlands and Carol F. Morris, Netherlands.
2. The Domain Names and Registrar
The disputed domain names <esteelauderfranchise.com> and <macfranchise.com> (the “Disputed Domain Names”) are registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2020. On March 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 11, 2020, the Registrar transmitted by email to the Center its 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 Complainants on March 20, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on March 24, 2020.
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 March 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2020.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 29, 2020. 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 Estee Lauder Inc. has marketed and sold cosmetics, skin care, and fragrances products throughout the US under the ESTEE LAUDER trademark. Founded by Esté Lauder in 1946, the Complainant Estee Lauder Inc. engages with women in over 150 countries all around the world, including the Netherlands (where the Respondent is apparently located) and Egypt (the region where the Respondent appears to be targeting through its use of the Disputed Domain Names).
The Complainants’ ESTEE LAUDER trademarks have been registered in more than 100 countries and jurisdictions, e.g., US trademark registration no. 3,217,192 registered on March 13, 2007.
In addition, the Complainants have been a global marker of cosmetics under the MAC and M·A·C trademarks for more than 30 years. The MAC trademark is part of the Estee Lauder family of companies. And as Estee Lauder, MAC cosmetics are sold in the Netherlands and Egypt.
Furthermore, the MAC trademark has been registered in more than 100 countries, e.g., US trademark registration no. 3,023,827 registered on December 6, 2005. .
The Disputed Domain Name <esteelauderfranchise.com> was registered on December 30, 2019 while the Disputed Domain Name <macfranchise.com> was registered on August 26, 2019.
The Respondent is using the Disputed Domain Names in connection with a fraudulent and unauthorized offer to sell franchises to open MAC stores as if it was a senior executive for the Complainants. In addition, the Disputed Domain Name <macfranchise.com> redirects to the Complainant’s Makeup Art Cosmetics Inc. own website “www.maccosmetics.com”.
5. Parties’ Contentions
The Complainants’ contentions can be summarized as follows:
Identical or confusingly similar
The Complainants contend that the Disputed Domain Name <macfranchise.com> incorporates the Complainants’ MAC trademark in its entirety, while the <esteelauderfranchise.com> incorporates the ESTEE LAUDER trademark in its entirety. The addition of the generic term “franchise" to the Complainants trademarks does nothing to distinguish the Disputed Domain Names from the Complainants’ trademarks.
Rights or legitimate interests
The Complainants state that the ESTEE LAUDER and MAC trademarks predate the registration of the Disputed Domain Names.
In addition, there is no evidence that the Respondent has rights or legitimate interests in the Disputed Domain Names. The Respondent clearly was on actual notice of the Complainants’ rights before it registered the Disputed Domain Names. Indeed, the fact that the Respondent is using the Disputed Domain Names to pursue a fraudulent scheme to sell the right to operate MAC franchise locations establishes that the Respondent is completely aware of the Complainants’ trademarks.
The Complainants further submit that there is no relationship between the Complainants and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Disputed Domain Names with the Complainants’ trademarks.
Moreover, there is no evidence that that the Respondent is commonly known by the Disputed Domain Names.
The Complainants argue that the fact that the Respondent misrepresents in emails that the Respondent is a senior executive for MAC cosmetics and the Estée Lauder companies, when that is false, cannot support a finding of legitimate use.
Registration and use in bad faith
The Complainants contends that there is bad faith, since the Respondent is using the Disputed Domain Names to fraudulently offer to sell franchises of the Complainant’s retail stores, and to fraudulently offer to sell franchises of the Complainants’ retail stores, and to falsely suggest a connection with the Complainants.
In addition, the Complainants’ MAC and ESTEE LAUDER trademarks enjoy wide recognition. Thus, it is inconceivable that the Respondent was unaware of the Complainants’ trademark when it registered the Disputed Domain Names. )
Consequently, the Respondent is using the Disputed Domain Names intentionally to attempt to attract Internet users, for commercial gain, to its website by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of its websites.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
6.1. Preliminary Matters
A. Consolidation of Complainants
The Complainants have brought a single consolidated Complaint against the Respondent. Section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states the following with respect to a single complaint brought by multiple complainants: “Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes.[…] In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”
There is sufficient evidence to support a consolidation of Complainants. The Complainants are part of the same group of companies and share a common legal interest and grievance: the Respondent has engaged in conduct that has affected the Complainants’ rights in a similar fashion. Because of the similarity of the issues raised concerning the Disputed Domain Names, consolidation of the Complainants would be equitable and procedurally efficient.
B. Consolidation of Respondents
Section 4.11.2 of the WIPO Overview 3.0 states the following with respect to complaints consolidated against multiple respondents: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.” Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.
The Complainants submitted a request for the consolidation of proceedings against multiple respondents. In the present case, the evidence shows that each of the Disputed Domain Names adopted a common structure: each of them consists of the Complainants’ trademarks MAC and ESTEE LAUDER but with the addition of the term “franchise”. The registration dates of both Disputed Domain Names are very close in time. In addition, the Disputed Domain Names share the same registrar and both addresses are in the Netherlands. Moreover, in the emails sent from “[…]@macfranchise.com” there is a carbon copy (“cc”) of the message to the email “[…]@estelauderfranchise.com”.
Accordingly, the Panel finds that the Disputed Domain Names are subject to common control for the purposes of the Policy. The Respondents have not denied these assertions, thus the Panel permits the consolidation of the proceedings and will refer to both registrants of the Disputed Domain Names as the “Respondent” throughout the decision.
6.2. Substantive Matters
Paragraph 4(a) of the Policy lists the three elements which the Complainants must satisfy with respect to the Disputed Domain Names at issue in this case:
(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Disputed Domain Names are confusingly similar to the Complaints’ MAC and ESTEE LAUDER trademarks, since they each incorporate one of the Complainants’ trademarks in its entirety. The addition of the term “franchise” does not negate the confusing similarity.
Therefore, the Panel finds that the Complainants have 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 Names:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Names, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, 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 Complainants have not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the trademarks in the Disputed Domain Names. Furthermore, the Respondent is not known by the Disputed Domain Names.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Names. Moreover, it had the opportunity to demonstrate its rights or legitimate interests.
In addition, according to evidence submitted by the Complainants, the Respondent had used the Disputed Domain Names to create fake email accounts in order to offer to sell franchises to open MAC stores for the price of USD 15,000.
As such, the Panel finds that the Complainants have 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 Complainants must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
The fact that the Disputed Domain Names reproduce the Complainant’s MAC and ESTEE LAUDER trademarks, respectively, establishes that the Respondent was well aware of the Complainants’ trademarks when registering the Disputed Domain Names.
Moreover, the Respondent used the Disputed Domain Names in fake email accounts pretending to be senior executive for the Complainants, misleading Internet users for commercial gain by profiting from the similarity between the Disputed Domain Names and the Complainants’ well known trademarks.
This fact alone shows that the Respondent was well aware of the Complainants and their business and trademarks when it registered the Disputed Domain Names.
In addition, the Respondent did not submit any explanation or possible justification for its use of the Disputed Domain Names.
Due to this conduct, it is obvious that the Respondent intentionally created likelihood of confusion with the Complainants’ trademarks and their websites for the purpose of disrupting the business of the Complainants, as described by paragraph 4(b)(iii) 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 Names 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 <esteelauderfranchise.com> be transferred to the Complainant Estee Lauder Inc., and that the Disputed Domain Name <macfranchise.com> be transferred to the Complainant Makeup Art Cosmetics Inc.
Pablo A. Palazzi
Date: May 13, 2020