WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Estee Lauder Inc. v. Frank Nkafu
Case No. D2020-0647
1. The Parties
Complainant is Estee Lauder Inc., United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
Respondent is Frank Nkafu, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <esteelaudereurope.com> (“Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2020. On March 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 18, 2020, 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 Complainant on March 20, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 20, 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 Respondent of the Complaint, and the proceedings commenced on March 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 14, 2020.
The Center appointed Marina Perraki as the sole panelist in this matter on April 20, 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
Per Complaint, Complainant and its affiliates are among the world’s leaders in the cosmetics industry. Complainant was founded by Ms. Estee Lauder in 1946 and has sold and marketed cosmetics products, including fragrances and beauty products, all bearing the ESTEE LAUDER mark, for decades. Today Complainant is present in over 150 countries and territories and sells its products both in physical stores and online, with over 20 billion USD sales worldwide in the last year. The ESTEE LAUDER marks have been registered in more than 100 countries and jurisdictions. Complainant sells its products exclusively through authorised retailers and distributors or through its own websites. Complainant advertises its products systematically and has won many industry awards. Its followers in social media exceed 50 million. As a result the ESTEE LAUDER mark enjoys fame and reputation.
Complainant holds numerous domain name registrations, including <esteelauder.com> through which it launched a fully functional e‑commerce website on September 19, 2000.
Complainant’s group are the owners of numerous ESTEE LAUDER trademark registrations, including: the United Kingdom trademark registration No. 1061327, ESTEE LAUDER, registered on April 7, 1976 and the European Union trademark registration No. 91090, ESTEE LAUDER, registered on December 1, 1998.
The Domain Name was registered on August 28, 2018.
The Domain Name redirects visitors to Complainant’s own German language website at “www.esteelauder.de”.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name incorporates trademark ESTEE LAUDER in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The word “europe” which is added in the Domain Name does not prevent a finding of confusing similarity (BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017‑0284; Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn , WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is confusingly similar to the ESTEE LAUDER mark in which the Complainant and Complainant’s group has rights.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant has demonstrated, the Domain Name redirected visitors to Complainant’s own German language website. A respondent’s use of a complainant’s mark to redirect users would not support a claim to rights or legitimate interests (WIPO Overview 3.0 , section 2.5.3 ).
This also indicates that Respondent knew of Complainant and chose the Domain Name with such knowledge (Safepay Malta Limited v. ICS Inc, WIPO Case No. D2015-0403).
Furthermore, as Complainant has demonstrated, an email server has been configured on the Domain Name. This indicates the intention of Respondent to potentially use the Domain Name for purposes other than hosting a website, including potentially for constructing an email composition containing the Domain Name, to be used for deceiving purposes (Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the ESTEE LAUDER mark is so well-known and had been widely used for decades and registered at the time of the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (WIPO Overview 3.0, section 3.2.2).
Furthermore, the Domain Name incorporates in whole Complainant’s mark plus an additional term “europe” that corresponds to the presence of Complainant’s group in Europe. Use of the word “europe” in the Domain Name therefore creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Name.
The redirection of the Domain Name to Complainant’s German language website at “www.esteelauder.de”, also supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name is in some way endorsed by or connected with Complainant (LIDL Stiftung & Co. KG v. Domain Administrator, Modern Empire Internet Ltd., WIPO Case No. D2018-0523; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367).
As regards bad faith use, the Panel considers the following factors:
(i) the reputation of ESTEE LAUDER mark, which has been repeatedly recognized (Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna,
WIPO Case No. D2000-0869);
(ii) the failure of Respondent to submit a response; and
(iii) the implausibility of any good faith use to which the Domain Name may conceivably be put, including that, as Complainant has demonstrated, the Domain Name:
a) redirected to Complainant’s German language website; and that
b) an email server has been configured on the Domain Name, which indicates a risk that Respondent potentially uses the Domain Name to create an email address to be used for deceiving purposes (Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, supra).
Under these circumstances and on this record, the Panel finds that Respondent registered and is using the Domain Name in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
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 <esteelaudereurope.com> be transferred to Complainant
Date: May 4, 2020