WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OVS S.p.A. v. Ali Esmaelnejad, NicAgent
Case No. D2020-0893
1. The Parties
Complainant is OVS S.p.A., Italy, represented by Rapisardi Intellectual Property, Italy.
Respondent is Ali Esmaelnejad, NicAgent, Hungary.
2. The Domain Name and Registrar
The disputed domain name <ovsbeauty.com> (the “Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2020. On April 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 15, 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 April 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 amendment to the Complaint on April 21, 2020.
The Center verified that the Complaint together with 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 Respondent of the Complaint, and the proceedings commenced on April 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2020. Respondent did not submit any response by May 13, 2020. Accordingly, the Center notified Respondent’s default on May 21, 2020. On May 23, 2020, Respondent sent an email communication regarding the dispute to the Center.
The Center appointed John C McElwaine as the sole panelist in this matter on May 27, 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
Complainant, an Italian-based fashion retail company, is the owner of the OVS trademark and has obtained numerous trademark registrations worldwide, including but not limited to registrations for the trademark in the European Union (Registration No. 010761609) in multiple International Classes, most relevantly to the subject Complaint, International Class 3 for “non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; perfumery, essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations.” In addition, Complainant is the owner of numerous OVS and OVS+word domain names, including <ovs.it> and <ovsfashion.com>.
Complainant has over 1,600 OVS stores worldwide. Complainant has been featured in articles for internationally renowned fashion magazines such as Vogue, Women’s Wear Daily, Vanity Fair, and Marie Claire. Complainant’s revenue in 2017 was EUR 1.415 billion.
Respondent is located in Hungary.
On November 30, 2019, Respondent registered the Domain Name with the Registrar. The Domain Name resolved to an active website promoting cosmetics products bearing an OVS trademark; however, the website was taken down by the Registrar at the request of Complainant and the Domain Name did not resolve to an active website as of the filing of the Complaint.
5. Parties’ Contentions
Complainant contends that the Domain Name should be transferred because each of the three elements required in paragraph 4(a) of the Policy has been established.
With respect to the first element of the Policy, Complainant asserts common law trademark rights in the OVS trademark dating back to 1972 and registered rights dating back to 2012. Complainant alleges that the Domain Name is comprised of Complainant’s OVS trademark and the word “beauty” and that the addition of “beauty” does not distinguish the Domain Name from Complainant’s OVS trademark.
With respect to the second element of the Policy, Complainant alleges that the following establish that Respondent does not have any rights or legitimate interests in the Domain Name: (i) Complainant has never authorized Respondent to use the OVS trademark or register the Domain Name; (ii) Respondent has never been commonly known by “OVS Beauty”; (iii) that Respondent, to the best of Complainant’s knowledge, does not own any trademark rights in OVS or OVS BEAUTY; and (iv) Respondent was using the Domain Name in connection with offering counterfeit cosmetics products bearing an OVS trademark and, as such, was not using the Domain Name in connection with a bona fide offering of goods or services.
With respect to the third element of the Policy, Complainant alleges that Respondent used the Domain Name to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s name and trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of the products on Respondent’s website. Specifically, Complainant alleges that, prior to the takedown of the website hosted at the Domain Name, Respondent used the Domain Name to host a website that sold allegedly counterfeit OVS cosmetics products.
Respondent sent an email communication to the Center on May 23, 2020, stating the following:
“To whom it might concern,
Thank you for your email,
Please be advised that OVS Brand is not registered in the Madrid agreement, that’s why we have registered our brand total legal in our country and we have the total permission to produce and sell our products. We can use this domain (website) as you have not registered before.
This answer has sent many times to the Iranian customer service domain and we have been in contact with them many times.
For any valid judgment, please send your legal document so we can discuss.”
In accordance with paragraph 10(a) of the Rules, the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and the Rules. Paragraph 10(b) of the Rules dictates the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. With these provisions in mind, the Panel will treat Respondent’s email of May 23, 2020 as its informal, if late, response to the Complaint.
6. Discussion and Findings
Even though Respondent did not formally reply to the Complaint, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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.
Because of the absence of a formal Response, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. Here, Complainant has provided evidence that it is the owner of numerous trademark registrations globally for the OVS trademark. This is sufficient to establish valid trademarks rights and, accordingly, standing to bring this proceeding.
It is well-established, and the Panel agrees, that the addition of a descriptive word to a trademark in a domain name does not avoid a finding of confusing similarity. See Mastercard International Incorporated v. Dolancer Outsourcing Inc., WIPO Case No. D2012-0619; Air France v. Kitchkulture, WIPO Case No. D2002-0158; DHL Operations B.V. and DHL International GmbH v. Diversified Home Loans, WIPO Case No. D2010-0097. The Domain Name contains Complainant’s OVS trademark in its entirety. The addition of the word “beauty” does not serve to distinguish the Domain Name from the OVS trademark.
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s OVS trademark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested 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 mark at issue.”
With respect to Complainant’s contention that Respondent is not commonly known by the Domain Name, the Panel notes that the Registrar’s information lists Respondent as “Ali Esmaelnejad, NicAgent” and the Panel therefore finds, based on the record and the lack of evidence otherwise, that Respondent is not commonly known by the Domain Name. See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049 (“the Panel notes that the respondent’s name is ‘Bestinfo’ and that it can therefore not be commonly known by the domain name.”).
As noted above, as it pertains to Complainant’s allegation that Respondent is not authorized by Complainant to use the OVS trademark, although Respondent has been properly notified of the Complaint by the Center. On the other hand, Respondent alleges to have a registered trademark in its country but has failed to submit any evidence to prove it.
Furthermore, the Panel also finds that Respondent was not making bona fide use of the Domain Name under paragraph 4(c), as, based on the uncontroverted facts made of record in the subject proceeding, the Domain Name was being used to sell allegedly counterfeit cosmetics products under the OVS trademark. UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13; see also Fabergé Ltd. v. Management Services, WIPO Case No. D2009-0425. Here, the cosmetic products that were being sold on the Respondent’s website bore spurious copies of Complainant’s OVS trademark. If not considered counterfeit products, the actions of Respondent were willfully designed to impersonate and pass off Respondent’s products as being those of Complainant.
Based on the foregoing, Complainant has made a prima facie showing of Respondent’s lack of any rights or legitimate interests and Respondent has failed to come forward with any evidence to rebut that showing. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can also be found where respondents “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which he had no right or legitimate interest. See Accor S.A. v. Kristen Hoerl, WIPO Case No. D2007-1722. Here, the OVS trademark represents the goodwill of a well-known clothing retail company. Based on Complainant’s submission, which was not rebutted by Respondent, Respondent must have known of Complainant’s OVS trademark when it registered the Domain Name, which is comprised of Complainant’s OVS trademark combined with the word “beauty,” which is directly related to Complainant’s cosmetics products. As such, the nature of the Domain Name carries a risk of implied affiliation. See WhatsApp Inc. v. Francisco Costa, WIPO Case No. D2015-0909 (finding that “it is likely improbable that Respondent did not know about Complainant’s WHATSAPP trademark at the time it registered the disputed domain name considering the worldwide renown it has acquired amongst mobile applications, and the impressive number of users it has gathered since the launch of the WhatsApp services in 2009”.) and WIPO Overview 3.0, section 2.5.1. Respondent’s email communication seems to argue that Complainant has not registered its OVS trademark in a country in which Respondent may be doing business. However, this argument is irrelevant because Complainant has a registered European Union Trade Mark, which is valid in Respondent’s country, namely Hungary. On the other hand, as already mentioned, Respondent has not provided any evidence of its alleged trademark rights in the term “ovs”.
As discussed in the previous section, based on the uncontested facts, Respondent does not appear to have any rights or legitimate interests in the Domain Name and there does not appear to be any justification for Respondent’s choice to register the Domain Name. Accordingly, on balance, there does not appear to be any other reason for Respondent’s registration of the Domain Name other than for the possibility to trade off the goodwill and reputation of Complainant’s OVS trademark or otherwise create a false association with Complainant. This is additionally evidence of bad faith registration and use.
Furthermore, the Panel finds that Respondent’s uncontroverted use of the Domain Name in connection with the sale of allegedly counterfeit products is evidence of bad faith. See WIPO Overview 3.0, section 3.1.4 (“given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.”); see also Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 (“Respondent’s sale of counterfeit goods on a website accessible through the domain name is paradigmatic bad faith.”)
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith under 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 Domain Name, <ovsbeauty.com>, be transferred to Complainant.
John C McElwaine
Date: June 9, 2020