WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Persona Cosmetics, Inc. v. Vitamin Packs Inc.
Case No. D2021-2103
1. The Parties
Complainant is Persona Cosmetics, Inc., United States of America (“United States”), represented by Pryor Cashman, LLP, United States
Respondent is Vitamin Packs Inc., United States, represented by Mayer Brown LLP, United States.
2. The Domain Names and Registrar
The disputed domain names, <personacosmetics.com>, <personamakeup.com>, and <personaskin.com> (the “Domain Names”), are registered with GoDaddy.com, LLC (“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on July 1, 2021. On July 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 1, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 2, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant did not fil an amendment.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2021. The Response was filed with the Center on August 13, 2021.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on August 25, 2021. 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.
Complainant submitted a Supplemental Filing on August 26, 2021, and Respondent submitted a Supplemental Filing in response on September 2, 2021, requesting that the Panel either strike (or disregard) Complainant’s Supplemental Filing or, in the alternative, consider also Respondent’s Supplemental Filing.
4. Factual Background
Complainant, Persona Cosmetics, Inc. is a cosmetics company that manufactures, distributes, and sells cosmetics and skincare products including eyeshadow, eye liner, lip balm, lipstick, lip gloss, lip liner, lip sets, bronzer, blush, highlighters, makeup brushes, and nail polish. Complainant sells direct-to-consumer through its website located at “www.personacosmetics.co”, as well as to retailers such as Ulta, Verishop, and Naimie’s.
Complainant is the owner of a United States trademark registration on the principal register of the United States Patent and Trademark Office (“USPTO”) (Reg. No. 6,021,476) for the mark PERSONA for use in connection with “cosmetics; cosmetics and make-up” in International Class 3. The mark’s respective application and registration dates are May 3, 2018 and March 31, 2020, and it carries a date of first use in commerce of November 26, 2016.
Complainant indicates it has received media attention since its founding in 2016, including articles in Allure (e.g., “The Prettiest Red Lipstick for Your Skin Tone,” December 25, 2020); Cosmopolitan (e.g., “I Found the Best Eyeshadow Palette for Brown Eyes,” March 4, 2019); Essence (e.g., “Light Up The New Year With These Silver And Gold Highlighters,” September 26, 2018); Haute Living (e.g., “LA Beauty Guru Sona Gasparian Shares Her Tips For Achieving A Cali Glow,” February 22, 2018); and Entrepreneur (e.g., “Why Women Dominate Influencer Marketing -- and Why It May Be the Right Career for You,” August 2, 2018).
Respondent, Vitamin Packs, Inc. d/b/a Persona Nutrition, began operations in July 2017 under the name Vitamin Packs, but then changed its “doing business as” name to Persona Nutrition in or around August 2018 as part of corporate rebranding. Respondent is a vitamin and supplement subscription business that conducts its business almost exclusively online through its website at “www.personanutrition.com”. Respondent uses a proprietary assessment tool and algorithm to assist subscribers in identifying areas of their diet in need of improvement through nutrition and supplements. From 2017 to 2019, Respondent’s revenues increased from approximately USD 200,000 to USD 4 million. Recent estimates of annual revenue are between USD 19 million and USD 22 million. According to Respondent’s founder, as of August 2019, 750,000 people had taken Respondent’s assessment. Only after new subscribers have taken the assessment and purchased products is postal mail used to send subscriptions to customers. In addition to selling vitamin and supplement subscriptions, Respondent employs nutritionists to provide advice to customers via telephone or webcast. Nestlé Healthcare Nutrition, Inc. d/b/a Nestlé Health Sciences (“Nestlé”) acquired Respondent in August 2019.
The Domain Name <personacosmetics.com> was initially registered by a third party on October 11, 2002, while the Domain Names <personamakeup.com> and <personaskin.com> were also initially registered by a third party on January 30, 2006. Respondent acquired the Domain Names from a third-party broker on July 3, 2018, as part of a purchase of 22 domain names. At the time of the Complaint, all of the Domain Names re-directed to Respondent’s website at “www.personanutrition.com”.
Respondent indicates that on March 30 and April 12, 2021, counsel for the parties exchanged letters in connection with the Domain Names and in those letters, Respondent did not offer to sell the Domain Names to Complainant.
On June 7, 2021, Complainant filed a lawsuit in the United States District Court for the Central District of California against (i) Société des Produits Nestlé S.A, (ii) Nestlé Health Sciences, and (iii) Respondent (“Lawsuit”). According to Respondent, Complainant alleges in the Lawsuit that Respondent is committing: (i) federal trademark infringement by using PERSONA in connection with its vitamin and supplements subscription business in light of Complainant’s federally registered PERSONA mark; (ii) federal unfair competition by using PERSONA in connection with its vitamin and supplements subscription business; (iii) common law unfair competition by using PERSONA in connection with its vitamin and supplements subscription business and through redirection of the Domain Names associated with Complainant’s federally registered PERSONA mark to Respondent’s website at “www.personanutrition.com”; (iv) violation of the Anti-Cybersquatting Consumer Protection Act through redirection of the Domain Names to Respondent’s website; and (v) various related state law and unjust enrichment claims. Attached to Respondent’s Supplemental Filing, Respondent has provided a copy of a Motion to Dismiss the Lawsuit (with Memorandum of Points and Authorities in Support), dated August 20, 2021, which was filed by Respondent and the other defendants in the Lawsuit.
5. Procedural Issues
The Panel considers it appropriate, before turning to the merits of this dispute, to assess and determine the Parties’ arguments on several procedural issues.
(i) Consolidation
Complainant has requested that the Panel consolidate all of the Domain Names into one complaint. Under paragraph 3(c) of the Rules, a complaint may relate to more than one domain name, so long as the person or entity that is the registrant of the domain names is the same. Further, paragraph 10(e) of the Rules empowers panels to consolidate multiple domain name disputes in accordance with the Policy and the Rules.
Complainant submits it would be equitable and procedurally efficient to permit Complainant to file a single consolidated complaint against Respondent. All of the Domain Names were registered by Respondent, and all were registered with the Registrar. Further, all of the Domain Names redirect and resolve to the same domain name and website at “www.personanutrition.com”. In addition, according to the Registrar’s WhoIs database, all of the Domain Names use identical name servers.
Respondent has not objected to Complainant’s request for consolation. The Panel determines that the Domain Names can be consolidated into one complaint and that this will avoid unnecessary duplication of time, effort and expense, and is fair and equitable to the parties.
(ii) Supplemental Filings
Complainant submitted a Supplemental Filing claiming it was necessary to correct misstatements in Respondent’s Response that could not reasonably have been anticipated and to address issues that were not otherwise appropriate to deal with until Respondent’s position was clear. In particular, Complainant initially seeks to address two issues that it claims could not be anticipated when it filed its Complaint, namely, the validity of UDRP “default” cases (i.e., where a respondent has not submitted a response) as precedent, and the validity of Complainant’s UDRP claim notwithstanding the Lawsuit. In addition, Complainant seeks to add certain arguments concerning the merits including, among other things, responding to Respondent’s argument minimizing Complainant’s evidence of confusion; whether Respondent’s use of the Domain Names in commerce supports its claim to rights or legitimate interests; whether the existence of PERSONA-formative marks in connection with goods and services unrelated to cosmetics undermines Complainant’s rights in its PERSONA mark; and expressing skepticism about whether Respondent had no knowledge of Complainant’s existence when it re-branded its company and purchased the Domain Names in July 2018, given Complainant’s federal trademark application of May 2018 would have been revealed in a USPTO search.
Respondent has request that the Panel either strike (or disregard) Complainant’s Supplemental Filing, or in the alternative, if the Panel does not do so, then consider also Respondent’s Supplemental Filing to maintain balance in the case. Respondent contends that its Response does not contain any alleged misstatements or raise issues that Complainant could have not reasonably anticipated, and instead Complainant is attempting to use its Supplemental Filing to cure deficiencies in the Complaint. Respondent urges that the Panel should not permit Complainant to attempt to cure these mistakes when the Rules are clear – Complainant gets only one chance to establish its case.
The Panel observes that neither the Policy nor the Rules provide for supplemental filings, apart from documents that may be requested by the Panel pursuant to paragraph 12 of the Rules. Indeed, “[u]nsolicited supplemental filings are generally discouraged, unless specifically requested by the panel.” See WIPO Overview of the WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6. The admissibility of supplemental filings is therefore in the discretion of the Panel, bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and that both parties are treated equally and given a fair opportunity to present their respective cases. Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a response that could not reasonably have been anticipated.
Here, the Panel determines that Complainant’s Supplemental Filing is denied to the extent it offers rebuttal to Respondent’s arguments on the merits concerning (i) the authority of cases cited by Complainant that were decided on a default basis, (ii) Complainant’s evidence of confusion; (iii) whether Respondent has established rights or legitimate interests by using the Domain Names to promote selling its goods in commerce, and (iv) whether the existence of PERSONA-formative marks in connection with goods and services unrelated to cosmetics undermines Complainant’s rights in its PERSONA mark. These points and arguments raised by Respondent could have been reasonably anticipated by Complainant, and hence, the Panel finds it unnecessary and inappropriate to take Complainant’s Supplemental Filing into consideration as to them.
At the same time, Respondent in its Response provided new information that it bought the Domain Names as part of a larger package sale of domain names, and introduced a new argument that Complainant waited too long in bringing the Complaint. Respondent also provided detailed information in its Response regarding the Lawsuit. Although Complainant was aware of the Lawsuit, referenced it in the Complaint, and might have anticipated Respondent’s request to terminate this UDRP case under paragraph 18 of the Rules, nevertheless, the Panel considers it important to have more complete information concerning the Lawsuit. The Panel in its discretion therefore decides that it is appropriate in this case to admit and consider the parties’ Supplemental Filings insofar as they provide information or arguments on these points.
(iii) Respondent’s Request to Terminate Case Pursuant to paragraph 18 of the Rules
Respondent submits that in view of the Lawsuit (discussed supra), rather than proceed to a decision, the Panel should terminate this case pursuant to paragraph 18 of the Rules. Respondent states that UDRP panels routinely deny complaints based in part on first-filed lawsuits, determining that all issues should be resolved in the courts, where a fully developed record including live testimony, cross-examination, and oral argument are available. Respondent urges that these considerations are present here, and the Panel should terminate this proceeding pursuant to paragraph 18 of the Rules and well-established precedent.
In particular, Respondent observes that to date, Complainant has not completed service on one defendant in the Lawsuit; therefore, that defendant does not yet have a deadline to respond. Respondent asserts that this UDRP case was filed after Complainant’s Lawsuit in an effort to require Respondent to issue a response faster than it would have to in the Lawsuit. Given this context, Respondent argues this case is the latest salvo in Complainant’s mistaken attempt at forum shopping. The Lawsuit seeks the same relief, as well as more expansive related relief, and was filed before the UDRP case, such that this case is merely ancillary to the larger, more complex disputes in the Lawsuit. Respondent states the court can provide more comprehensive relief and a complete adjudication of all disputes between the parties, which is relevant to the Panel’s consideration of whether termination is proper.
Respondent further contends that entitlement to the Domain Names turns on complex determinations of fact, for example, whether Respondent or its predecessor company had (or should have had) knowledge of Complainant’s trademarks, or just how common is the name or mark, PERSONA. The federal court will likely have available a complete record, the opportunity to hear live testimony, and cross-examination, none of which are available to this Panel. Respondent observes that while in similar cases involving broader, more complex legal issues related to domain name disputes, UDRP panels have proceeded to a decision (to deny the complaint), those panels did not address the merits of each element of the Policy in whole or part. In some sense, therefore, it is a distinction without difference to say that the panel proceeded to a partial decision or terminated the proceeding, as either way the result is identical. Respondent submits, however, that the preferred approach is to terminate the proceedings, particularly where, as here, the court proceedings involve broad factual and legal issues respecting trademark rights and usage, as opposed to the more narrowly framed questions to be decided under the Policy. Respondent concludes that the relief sought by Complainant in this proceeding is entirely duplicative of the more complex lawsuit that Complainant initiated prior to initiating this proceeding; therefore, the Panel should terminate the proceeding.
Complainant has responded in its Supplemental Filing that notwithstanding Respondent’s arguments, Complainant has a valid UDRP claim and the parallel Lawsuit does not necessitate dismissal of that claim. Complainant contends that applicable UDRP precedent holds that the injury to Complainant should not persist for a year or more while the Lawsuit, which Respondent seeks to delay, winds its way through the courts. Rather, the clear relief to which Complainant is entitled should be granted expeditiously in the context of this UDRP case. As reply, Respondent in its Supplemental Filing contends that Complainant made the conscious decision to initiate this UDRP case after filing the Lawsuit. Respondent urges that Complainant’s Supplemental Filing does not refute that the prior-filed Lawsuit should result in termination or denial of relief in this proceeding, and that Respondent has submitted robust authority in support of its position.
The Panel’s analysis starts with paragraph 18 of the Rules, which provides as follows:
“Effect of Court Proceedings
(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
(b) In the event that a Party initiates any legal proceedings during the pendency of an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, it shall promptly notify the Panel and the Provider.”
Paragraph 18(a) of the Rules is applicable, as Complainant initiated the Lawsuit involving allegations relating to the Domain Names on June 27, 2021, prior to filing its Complaint in this case on July 1, 2021. The Panel observes that Complainant filed its Complaint in this case just four days after initiating the Lawsuit, thus marking what appears to be a deliberate choice by Complainant to proceed on dual tracks. Paragraph 18 of the Rules makes clear that when court proceedings are initiated prior to the UDRP claim, the Panel has “discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
Respondent has cited a number of UDRP cases in support of its arguments to terminate this case, while Complainant has responded with reference to the WIPO Overview 3.0 and reliance on another UDRP case. The cases cited by the Parties in relation to the question of whether a case may be terminated in view of parallel court proceedings reveal a diversity of approaches taken by UDRP panels, and generally confirm that paragraph 18 of the Rules vests discretion in the panel to consider this issue in view of the particular circumstances of each case. Moreover, in relation to the Panel’s discretion, WIPO Overview 3.0, section 4.14.2, which was referenced by Complainant, provides guidance that “panels generally issue a UDRP decision on the merits even in an overlapping court-UDRP proceeding scenario where, notwithstanding the fact that a UDRP decision would not be binding on the court, the relative expediency of the UDRP versus courts is seen as a benefit to the parties. Panel reluctance to terminate a UDRP case on this basis often also takes account of, and respects, the potential for a court action to address causes of action separate from that being addressed in the UDRP proceeding.”2
The Panel turns initially to consider the cases cited by Respondent. Respondent cited cases in which the UDRP panels proceeded to a final decision on the merits, even though the panels observed that there were related court proceedings or that certain disputed issues (e.g., trademark infringement or dilution, breach of contract or fiduciary duty, defamation) might be better addressed in a court. These cases do not weigh in favor of terminating the instant case, where, as here, there is no pre-existing personal or commercial relationship between the parties that is in dispute, and Complainant has submitted a claim that fits squarely within the UDRP. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187 (panel proceeded to deny complainant’s claim on merits, despite challenge to panel’s jurisdiction and parallel federal court proceedings); Greyson International, Inc. v. William Loncar, WIPO Case No. D2003-0805 (panel denied complaint on merits because complainant failed to carry burden of proof on the Policy’s second and third elements, noting “[t]he evidence submitted by Complainant might support civil claims for trademark infringement, breach of fiduciary duty, breach of contract, disparagement, or defamation in a court of law, not in this limited administrative proceeding”); Western Holdings, LLC v. JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution, WIPO Case No. D2004-0426 (panel proceeded to deny complaint on merits because complainant failed to prove bad faith, even in view of related federal court proceedings); Lockheed Martin Corporation v. Lynn Dixon, WIPO Case No. D2005-0045 (panel issued final decision on merits denying complaint, while stating “Complainant might ultimately be able to prove a case of trademark infringement or dilution in court”); Sonatel Multimédia SA v. Universal Computer Associates SUARL/Mamadou Kébé, WIPO Case No. D2005-0009 (panel denied respondent’s request to terminate under paragraph 18(a) of the Rules and proceeded to rule on merits, noting “while both proceedings deal with the disputed domain names, the nature of the demands presented to the Senegalese Court by each party does not prevent the Panel from proceeding to a decision under the UDRP on the issue of whether such domain names shall be transferred or not to the Complainant”); and Sharman License Holdings Limited v. Sonia Thompson a.k.a. Kazagold, Mykazaagold Music Download Service a.k.a. Kazagold, WIPO Case No. D2008-0554 (where respondent filed court case after complainant had filed UDRP claim, panel refused respondent’s request under paragraph 18 of the Rules to suspend or terminate proceedings and decided case on merits in favor of complainant).
Of the cases cited by Respondent that proceeded to a final decision, the case that is perhaps most similar to the instant case is Cognigen Networks, Inc. v. Pharmaceutical Outcomes Research a/k/a Cognigen Corporation, WIPO Case No. D2001-1094. In Cognigen Networks, the panel denied a request to terminate the UDRP proceedings under paragraph 18(a) of the Rules. In that case, just as here, the complainant filed a federal lawsuit prior to the filing its UDRP complaint (the complainant had filed its federal lawsuit approximately two months before filing its UDRP complaint). The panel there observed that, in accordance with paragraph 4(k) of the Policy, the complainant had taken advantage of the option available to either party, “at its sole discretion, of instituting litigation in a court of law before this proceeding is commenced or after it has been concluded.” Further, and similar to the circumstances here, the panel noted that the allegations raised and relief sought by the complainant in the federal court, predicated on allegations of federal trademark infringement and unfair competition under federal and state law, “extend well beyond those issues which this Panel can consider and the relief it can provide through the present administrative proceeding.” Observing that both parties had filed their papers in the UDRP case, the panel determined, in accordance with the discretion granted under paragraph 18(a) of the Rules, to deny the respondent’s request to dismiss the proceeding.
Respondent cited other cases where panels terminated the UDRP proceedings in view of parallel court proceedings. These cases involved circumstances that fall into a number of typical categories, including cases where common law trademark rights were contested; cases involving parties who had previous personal, contractual or other commercial relationships, and where those circumstances were at the center of the dispute; cases involving the rights of non-parties; and cases where the continued validity of the complainant’s registered trademark was itself in issue in the court proceedings. Some of the cases cited by Respondent implicated more than one of these categories. The panels in these cases determined that due to the circumstances, the cases where better left to the courts. See Rudy Rojas v. Gary Davis, WIPO Case No. D2004-1081 (panel declined to reach decision on the merits, observing “Complainant’s evidence of its common law rights in the mark is scanty”, and “[b]oth parties are using Policy proceeding to gain a tactical or psychological advantage in a broader business dispute between them”); Jason Crouch and Virginia McNeill v. Clement Stein, WIPO Case No. D2005-1201 (panel identified that parties had previously been involved in business and personal relationships; in that context, the panel ruled “where the dispute concerning the domain names is part of and ancillary to much larger disputes involving questions of contractual obligations, fiduciary duties, and tortuous conduct, it would be inappropriate to use the Policy to attempt to carve out and resolve the relatively minor, but interconnected, domain name dispute”); Knipping Kozijnen B.V. v. R.T.P. Hanssen, WIPO Case No. D2006-0622 (case terminated where it involved the rights of several third parties not before the panel, as well as the broader subjects of trademark ownership and infringement); Family Watchdog LLC v. Lester Schweiss, WIPO Case No. D2008-0183 (case terminated where panel determined that the domain name dispute was ancillary to other trademark infringement, unfair competition, deceptive trade practices, and related state law claims between the parties, and where respondent had filed a petition for cancellation of complainant’s mark before the USPTO, asserting respondent had senior trademark rights); Aussie Car Loans Pty Ltd v. Wilson Accountants Pty Ltd, (formerly Wilson and Wilson Accountants), WIPO Case No. D2008-1477 (case terminated where panel considered that the issue of whether complainant had common law trademark rights was at center of the court proceedings, and insofar as complainant relied on registered marks, complainant’s entitlement to continue as registered owner of those marks was also disputed in the court proceedings); DNA (Housemarks) Limited v. Tucows.com Co., WIPO Case No. D2009-0367 (case terminated where respondent filed court proceedings after UDRP case had been filed but before panel had been appointed. The panel weighed in favor of termination the fact that “[t]he substance of Respondent’s civil cause of action against Complainant is virtually identical to the determinations this Panel would…consider under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.” The panel observed that respondent’s declaratory relief request in the court “is limited to its entitlement to the disputed domain name. There is no other apparent claim, much less another claim that might make entitlement of the disputed domain name pale in importance: no claim for trademark infringement, no dispute over prior transfers of the disputed domain name or related misconduct, no claim for damages at all. When entitlement to the disputed domain name is but one of many issues in the pending civil litigation, panels have occasionally exercised their discretion to proceed to a decision.”); and Yellow Pages Group Co. / Groupe Pages Jaunes Cie. v. Thomas Moll / Yellow Page Marketing B.V., Case No. D2011-1833 (case was related to Canadian court proceedings brought by the Competition Bureau against respondent; a lawsuit brought by the Federal Trade Commission in the United States against respondent; respondent’s Canadian court proceedings against complainant for expungement of the trademark due to alleged genericness; and complainant’s court proceedings against respondent in The Netherlands. In this context, the panel terminated the UDRP case under paragraph 18(a) of the Rules, without prejudice to complainant’s right to file a new complaint against respondent following termination of the expungement proceedings).
Turning to the recent UDRP case relied upon by Complainant, Modern Vascular, LLC v. Sean Hay, JCMA Inc and Modern Vascular & Vein Center LLC, WIPO Case No. D2020-0303, the panel there decided to rule on the merits despite related federal court proceedings. In Modern Vascular, like here, the complainant had filed federal court proceedings prior to filing its UDRP claim. As the panel observed, “the Complainant brought this UDRP action after it had already filed its complaint in federal court in Arizona, so it is clear that the Complainant prefers the expediency of this proceeding, and to obtain the Panel’s reasoned judgment even while the litigation is pending.” Further, the panel noted that, just as in this case, “the federal court litigation is only at the motion to dismiss stage.” In this regard, “[i]f that motion is granted, the lawsuit will be dismissed without reaching any decision on the merits. If that motion is denied, it may nevertheless be many months, if not years, before any final decision on the merits is reached.” Unlike this case, the respondent in Modern Vascular had not invoked paragraph 18 of the Rules. However, the panel in Modern Vascular indicated “that its Decision may aid in settlement discussions between the Parties, since this Decision will provide the Parties with a third party’s objective assessment of the claims with respect to the disputed domain name, or it may be of some persuasive authority to the court should the lawsuit proceed on the merits.” See also Tiara Hotels & Resorts LLC v. John Pepin, WIPO Case No. D2009-0041 (panel noted that while “its decision will not be binding on the Court”, nevertheless, the “issuance of a [UDRP] decision may help facilitate settlement”).
The Panel has considered the arguments and cases put forward by the parties. The Panel determines that given the circumstances in this case, including that Complainant has made a deliberate choice to take advantage of the expediency of UDRP procedures as a form of Alternative Dispute Resolution – ADR that is non-binding on court proceedings, the Panel will proceed to a decision on the merits. As to other pertinent circumstances, the Panel notes that Complainant has a registered trademark, there is no pre-existing personal or commercial relationship between the parties that complicates the dispute related to the Domain Names, and this case does not present any other complex circumstances beyond those presented in numerous UDRP cases. In particular, the question of whether Respondent knew, or should have known, of Complainant’s PERSONA mark (or Complainant’s application for this mark prior to registration) is not an unusual issue in the context of UDRP proceedings. Indeed, this issue is so regularly encountered that WIPO Overview 3.0 devotes a section of guidance for the topic. See WIPO Overview 3.0, section 3.2.2 (“Knew or Should Have Known”). For these reasons, the Panel denies Respondent’s request that the proceedings be terminated pursuant to paragraph 18 of the Rules; it does so without prejudice to any determination that a court of competent jurisdiction may make in relation to the Domain Names, but also with the observation that this Decision may provide the parties with a third party’s objective assessment of the claims with respect to the Domain Names.
(iv) Impact of Delay by Complainant
Respondent contends that Complainant has delayed in bringing this case from at least July 2018 to the present. Respondent cites Greyson International, supra, where the panel noted that when a complainant knew of respondent’s activities with respect to a domain name “no later than fourth quarter 2002”, yet “did not institute these proceedings until October 2003,” the complainant’s knowledge “illustrates that there is no proof of any kind that Respondent registered the Domain name in bad faith.” Respondent asserts that Complainant delayed by nearly three years bringing the Complaint, and the Panel should conclude that Complainant’s knowledge illustrates there is no proof that Respondent registered the Domain Names in bad faith.
Complainant, in its Supplemental Filing, responds to Respondent’s contention that Complainant sat on its rights. Complainant states it was unaware of Respondent’s “misuse” of the Domain Names until mid-2020 and then, almost immediately thereafter, Complainant retained counsel to reach out to Respondent to stop the alleged misconduct. To this point, Respondent responds in its Supplement Filing that it is difficult to imagine Complainant was unaware of the Domain Names from 2018 to 2020. Respondent further states that given Complainant’s Supplemental Filing cites no evidence, it is essentially requiring the Panel to accept that between 2018 and 2020, Complainant never considered using the most common generic Top-Level Domain (“gTLD”) designation used by for-profit companies in the United States, and simply used <personacosmetics.co> instead of <personacosmetics.com>. Further, given that Complainant is capable of submitting a declaration as it did with the Complaint, the Panel should give Complainant’s unsubstantiated claim no deference.
The Panel determines that Complainant did not unreasonably delay in bringing its Complaint. Further, the Panel considers that even if, for the sake of argument, Complainant did delay, the delay is not so great that this point should have significant bearing on this case. In particular, WIPO Overview 3.0, section 4.17, provides guidance that UDRP panels “have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits.” Previous UDRP panels have furthermore noted that trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of. Id.; see also Green Bay Packers, Inc. v. Moniker Privacy Services / Montgomery McMahon, WIPO Case No. D2016-1455 (the panel unanimously agrees with the view that the defense of laches does not apply in UDRP proceedings). Previous UDRP panels have noted that in specific cases, certain delays in filing a complaint may make it more difficult for a complainant to establish its case on the merits. To the extent this point is relevant in this case, it is considered in relation to the second and third elements of the Policy, discussed below.
6. Parties’ Contentions
The parties have provided detailed submissions, which are summarized below.
A. Complainant
(i) Identical of Confusingly Similar
Complainant contends that it has rights in its strong and protectable registered trademark PERSONA. Complainant states that Respondent’s Domain Names wholly incorporate the PERSONA mark, with the mere addition of the generic terms “cosmetics,” “makeup”, and “skin.” Complainant claims that UDRP panels have consistently found that when a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish identity or confusing similarity for purposes of the Policy. Further, the addition of the generic terms “cosmetics,”, “makeup”, and “skin” does not reduce the confusing similarity between Complainant’s PERSONA mark and the Domain Names. Rather, the inclusion of these generic terms increases confusing similarity because the terms are associated with Complainant’s product offerings.
Complainant concludes that the Domain Names are likely to cause confusion, mistake, and/or deception among the consuming public. As such, they are confusingly similar to the PERSONA mark in which Complainant has rights.
(ii) Rights or Legitimate Interests
Complainant submits that Respondent has no rights or legitimate interests in the Domain Names. Respondent has never been an authorized representative or agent of Complainant, and Complainant has never consented to Respondent’s registration of the Domain Names. Furthermore, Complainant’s adoption and use of the PERSONA mark in the United States as early as November 26, 2016 precedes Respondent’s acquisition of the Domain Names in 2018. In addition, upon information and belief, Complainant claims Respondent had knowledge of Complainant’s PERSONA mark and of the PERSONA cosmetics brand prior to acquisition of the Domain Names.
Furthermore, Complainant asserts that Respondent has not, and is not, making a bona fide use of the Domain Names. Each of them redirects users to the domain name <personanutrition.com> which, upon information and belief, is owned by Respondent. Relatedly, the Domain Name <personacosmetics.com> is nearly identical to Complainant’s <personacosmetics.co> domain name. Complainant states that UDRP panels have found that when a respondent’s use of the domain name misdirects potential visitors seeking the complainant’s commercial website to the respondent’s own website, this does not constitute a bona fide offering of goods or services.
In addition, Complainant states that Respondent has not been commonly known by the Domain Names. Upon information and belief, Respondent owns the domain name <personanutrition.com>. Respondent is not commonly known by the Domain Name <personacosmetics.com>, which is merely a substantial copy of Complainant’s <personacosmetics.co> domain name, by which Complainant is commonly known. Further, Respondent is also not commonly known by the Domain Names <personamakeup.com> or <personaskin.com>, which incorporate generic terms relating to the goods that Complainant offers for sale in connection with its PERSONA mark via Complainant’s online store located at <personacosmetics.co>, but which Respondent does not offer. Complainant states that where a respondent is not commonly known by the disputed domain name, panels will not find that respondent has rights or legitimate interests in the domain name.
In addition, Complainant asserts that Respondent is not making a legitimate noncommercial or fair use of the Domain Names without the intent for commercial gain or to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Rather, Respondent is using the Domain Names to confuse Internet users and divert them to its own domain name, <personanutrition.com>, by incorporating Complainant’s PERSONA mark into the Domain Names, along with generic terms relating to Complainant’s line of business, and by using Domain Names nearly identical to Complainant’s own domain name <personacosmetics.co>. As such, Respondent is capitalizing on Complainant’s goodwill in its PERSONA trademark by misdirecting Internet users seeking Complainant’s website to Respondent’s site.
Complainant also asserts that Respondent has engaged in typosquatting, which UDRP panels consider further evidence of a respondent’s bad faith and lack of legitimate rights or interest in a domain name. Specifically, with respect to Respondent’s registration of the Domain Name <personacosmetics.com>, Respondent has made a deliberate attempt to attract Internet users seeking to reach the website associated with Complainant’s domain name <personacosmetics.co>. Respondent has done this by engaging in typosquatting with the intent of catching Internet users who might mistakenly type gTLD “.com”’ instead of the country code Top-Level Domain (“ccTLD”) “.co”.
(iii) Registered and Used in Bad Faith
Complainant contends that Respondent has acquired and is using the Domain Names in bad faith. In particular, Complainant refers to the Policy, paragraphs (4)(b)(iii) and (iv), which provide in relevant part that “(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor” and “(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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.”
Complainant asserts, upon information and belief, that Respondent acquired the Domain Names without authorization in 2018, seeking to capitalize on the notoriety of Complainant’s PERSONA mark, the brand and its associated goodwill. Prior to that, the Domain Names redirected to <iconlasik.com>, an ophthalmology and Lasik eye surgery practice in Denver, Colorado, whose registrant, upon information and belief, was the prior owner of the Domain Names. Complainant states that panels evaluate respondents who have acquired domain names based on the same criteria as those who originally registered them.
Complainant contends that Respondent acquired the Domain Names primarily for the purpose of disrupting the business of Complainant. Specifically, Respondent acquired the Domain Names, which wholly incorporate Complainant’s PERSONA mark, for monetary gain by redirecting Internet users to Respondent’s website where Respondent markets, promotes, and sells its own goods. As UDRP panels have consistently found, this conduct of diverting traffic for the purpose of disrupting the business of a competitor for monetary gain is considered bad faith under the Policy.
In addition, Complainant claims Respondent is using the Domain Names in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s PERSONA mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the products on Respondent’s website. Actual confusion is strong evidence of bad faith use and registration. Complainant contends that Respondent has created actual confusion amongst consumers, as demonstrated by email correspondence from consumers, submitted in evidence. Furthermore, Complainant asserts that Respondent is using the Domain Names to redirect Internet users to a different Respondent-owned site. Complainant argues that previous UDRP panels have consistently found this serves as evidence that a respondent has registered a domain name to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with the complainant’s mark. Complainant submits that here, Respondent is using the Domain Names to redirect Internet users to a site at <personanutrition.com>, which upon information and belief, is Respondent’s primary domain name. Complainant argues it is irrelevant that, on visiting the site linked to the Domain Names, consumers might realize they are not connected with Complainant. As such, Complainant concludes that Respondent has registered the Domain Names in order to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s PERSONA mark.
Additionally, Complainant urges that UDRP panels have consistently found bad faith where the respondent knew or should have known of the use of the trademark prior to registering or acquiring the disputed domain name. Complainant asserts there is little doubt that Respondent knew, or should have known, of Complainant’s use of the PERSONA mark prior acquiring the Domain Names. This is primarily evidenced by the fact that Respondent wholly incorporated Complainant’s PERSONA mark in the Domain Names with the addition of generic terms that are directly related to Complainant’s line of business. In addition, Complainant claims it is not a coincidence that Respondent acquired the Domain Names in 2018, the same year in which Complainant filed its trademark application for PERSONA and after Complainant’s founding of the PERSONA cosmetics brand. Finally, Complainant states that, upon information and belief, Respondent is a sophisticated business entity that could not have acquired the Domain Names without knowledge of Complainant and Complainant’s rights in the PERSONA mark.
Complainant contends that Respondent has also engaged in typosquatting through its registration and use of the <personacosmetics.com> Domain Name. Each of the Domain Names creates a likelihood of confusion with Complainant’s PERSONA mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the products on Respondent’s site. Thus, Complainant concludes that Respondent’s actions in registering and using the Domain Names are intentional, willful and in bad faith, and were committed with full knowledge of Complainant’s ownership of the PERSONA mark and with full knowledge that it was using Complainant’s PERSONA mark for commercial gain. As such, the Panel should find that Respondent registered and is using the Domain Names in bad faith.
(iv) Complainant’s Supplemental Filing
Complainant asserts that while Respondent’s primary argument against bad faith is that it acquired the Domain Names in a package of 22 domain names, this argument is both factually deceptive and legally misleading, and thus merits correction. As an initial matter, Complainant observes that Respondent fails to provide any evidence that suggests (let alone establishes) Respondent was required to purchase all of these domain names together (as opposed to electing to purchase them all in one package). Furthermore, Complainant emphasizes that Respondent is not required to actively use and redirect the Domain Names that are confusingly similar to Complainant’s trademark and business, to Respondent’s own website. Respondent could have directed the Domain Names to a landing page or sold them for fair market value, since they are unrelated to Respondent’s business. Instead, Complainant contends that Respondent chose to redirect the Domain Names related to Complainant’s business, but unrelated to Respondent’s – including <personacosmetics.com>, which entirely incorporates Complainant’s company name and is only one letter off from Complainant’s <personacosmetics.co> website address – in a way that is intended to (and almost certain to) divert Complainant’s cosmetics consumers to Respondent’s site. This is classic bad faith.
B. Respondent
Respondent contends that the Panel should deny the relief sought by Respondent, on the following grounds: (i) Complainant has failed to establish exclusive trademark rights in the Domain Names; (ii) Respondent is engaging in lawful commerce in its successful business that does not directly compete with Complainant and therefore has rights and legitimate interests in the Domain Names; and (iii) Respondent had no knowledge of Complainant when it acquired the Domain Names as part of a larger sale of a package of domain names. Further, Respondent has never offered to sell the Domain Names to Complainant, and Respondent has no interest in holding the Domain Names solely to extract monetary gain from Complainant as Respondent uses them to promote and sell its bona fide goods and services.
(i) Identical or Confusingly Similar
Respondent disputes that Complainant has exclusive rights in the PERSONA mark and that any rights Complainant may have can be extended to any possible term that Complainant alleges may become associated with its admittedly small business. Respondent claims that Complainant fails to establish exclusive rights in PERSONA, particularly considering the myriad PERSONA mark users with rights senior to Complainant.
Respondent states that even if Complainant had shown exclusive rights in the PERSONA mark, the Domain Names do not match Complainant’s mark registration, but instead are <personacosmetics.com>, <personaskin.com>, and <personabeauty.com>. Respondent contends that Complainant has failed to demonstrate its exclusive right to exclude others from using domain names that combine PERSONA with additional words. Particularly where Complainant has not taken any action to register or control the domain name <persona.com>, Complainant cannot complain about Respondent’s successful efforts to build its Persona Nutrition brand.
Respondent asserts that Complainant has also failed to establish the relevance of the prior registrant or owner of the Domain Names; however, this point demonstrates that Complainant could have purchased the Domain Names in July 2018, when Respondent purchased them. Respondent contends that Complainant’s delay, seeking only now to obtain the Domain Names from Respondent three years after Respondent paid significant consideration for 22 related domain names (including the Domain Names) indicates that Complainant sat on its rights. Complainant should not be rewarded for Respondent’s marketing and promoting its Persona Nutrition brand from July 2018 until present by allowing Complainant to usurp the Domain Names that are not covered by its PERSONA registration.
Finally, Respondent asserts that Complainant’s argument that Respondent’s name incorporates Complainant’s purported PERSONA mark with the addition of “generic terms” falls flat when considering that Respondent purchased the Domain Names in a package with 19 other related domain names. Complainant has not shown an exclusive right in PERSONA, much less that Respondent knew or should have known about Complainant’s existence when it acquired the Domain Names.
(ii) Rights or Legitimate Interests
Respondent argues that Complainant misstates the standard for whether Respondent has rights or legitimate interests in respect of the Domain Names. According to Respondent, Complainant purports to trick the Panel into believing that Respondent could not have any rights or legitimate interests in the Domain Names unless Complainant authorized them on behalf of Respondent; however, this is not the standard. Respondent refers to paragraph 4(c)(i) of the Policy, which provides in relevant part that a respondent has rights and legitimate interests in a domain name when it has made 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.
Respondent contends that it has gained significant reputation and name recognition throughout its industry under its business name, Persona Nutrition, which is as close to the Domain Names as Complainant, and for which Complainant only has a mark registration for PERSONA. Respondent has enjoyed over USD 19 million in sales over the course of the last 12 months, and has seen demand for its goods and services increase at a rapid pace. In addition, Respondent acquired the Domain Names in 2018 as part of a package purchase of 22 domain name registrations, including the domain name <personanutrition.com>, which hosts Respondent’s website. Respondent claims this demonstrates that it has rights and legitimate interests in the Domain Names.
Respondent states it acquired the Domain Names on July 3, 2018, almost two years before Complainant obtained its trademark registration for PERSONA (again, not for PERSONA COSMETICS, PERSONA MAKEUP, or PERSONA SKIN, corresponding to the Domain Names). Respondent further states it had no knowledge of Complainant at the time it acquired the Domain Names as part of a larger acquisition of domain names. The Domain Names are not covered by Complainant’s PERSONA registration, and Respondent argues it is questionable whether Complainant can exclude others from the use of “persona” given its status as a small newcomer to a crowded field.
Respondent claims that the cases cited by Complainant provide no support for a conclusion that Respondent lacks rights in the Domain Names incorporating “persona”, when Complainant’s brand name is Persona Cosmetics, and Respondent has shown more sales success and consistent use of its mark than Complainant. Respondent further observes that Complainant has not provided any financial evidence of Complainant’s actual marketing spend, sales success, figures, or market penetration.
Respondent argues that the cases cited by Complainant are inapposite because they are cases where the respondents failed to file a response. If Respondent had not filed a Response in this case, those decisions may merit consideration; however, because Respondent has filed a Response, those cases are not worth the paper Complainant wasted by citing them. Thus, Complainant has not met its burden to show that Respondent’s use of the Domain Names is not fair. Respondent states it is using the Domain Names to help capture additional web traffic for its own goods and services, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s purported PERSONA trademark. Respondent contends it is fair for it to use PERSONA-formative domain names to support its Persona Nutrition business, just as it would be fair for Complainant to use <persona.com>, which is the domain name its trademark registration actually covers; however, Respondent emphasizes that Complainant has not registered that domain name. Further, it would have been fair for Complainant to acquire the Domain Names on the open market as Respondent did in July 2018, yet Complainant failed to do so.
With regard to Complainant’s allegation of typosquatting. Respondent states that it had no knowledge of Complainant when it acquired the Domain Names, nor did it have any reason to know of Complainant. Complainant has not introduced any evidence of marketing expenditures, market penetration, or anything to demonstrate it was anything more than a small business in 2018. It is therefore inconceivable how Complainant could argue Respondent engaged in typosquatting to rely on Internet users mistyping <personacosmetics.co>, when Respondent had no knowledge of Complainant, its registration, or its website, nor that its website existed in July 2018. Complainant has not shown that its purported trademark is even recognized, let alone well-known.
Respondent concludes there is no basis to conclude Respondent lacks rights or legitimate interests in the Domain Names. Respondent argues that it might even have superior rights to Complainant based on Respondent’s superior investment and resulting sales success of its Persona Nutrition brand.
(iii) Registered and Used in Bad Faith
Respondent submits that Complainant has also failed to show that Respondent has engaged in bad faith. Respondent argues that because Complainant did not raise the grounds listed in paragraphs 4(b)(i) or 4(b)(ii) of the Policy, there is no basis to claim that Respondent engaged in any such behavior and these factors favor Respondent by default. Respondent reasons that Complainant must therefore make an exemplary showing on the remaining two factors (e.g., Policy, paragraphs 4(b)(iii) and (iv)) to make a showing of bad faith. Left with only two of the four factors, examination of Complainant’s allegations and the reality by which Respondent came into possession of the Domain Names reveals Complainant’s arguments are without merit. Respondent also again emphasizes, repeatedly, that the UDRP cases cited by Complainant involve circumstances where the respondents defaulted by failing to respond to the complaints; thus, Respondent contends that all these cases are inapposite and the panels there drew inferences that cannot apply in this case.
With respect to paragraph 4(b)(iii) of the Policy, Respondent states it acquired the Domain Names on the open market as part of a larger purchase. On July 3, 2018, Respondent had no reason to know of Complainant’s business, and Respondent acquired the Domain Names to help build its new Persona Nutrition business. Respondent asserts the Complaint fails to demonstrate that Respondent registered the Domain Names primarily for the purpose of disrupting Complainant’s business. Complainant again relies almost exclusively on cases involving default to support its argument that it has satisfied its burden to demonstrate bad faith under paragraph 4(b)(iii) of the Policy.
Respondent states it uses the Domain Names to support its vitamins and supplements business, which does not directly compete with Complainant’s makeup business, and Respondent is not re-directing traffic to secondary markets for Complainant’s makeup products, nor is Respondent re-directing traffic to competing makeup companies. Respondent has not defaulted, nor has Respondent ever requested payment of any sum from Complainant, despite numerous communications and attempts to negotiate with Complainant in connection with Respondent’s trademark applications. Further Respondent claims that Complainant does not demonstrate that it and Respondent are business competitors or that they are engaged in similar lines of business – Complainant offers exclusively cosmetics while Respondent offers vitamin and supplements. Nor has Complainant introduced any evidence that Respondent’s website is conceptually or visually similar – a quick comparison of the Parties’ respective websites reveals they are not similar in any respect. Finally, Complainant has not alleged or demonstrated that Respondent was more likely than not aware of Complainant as a result of the niche market the Parties both serve.
With regard to the Policy, paragraph 4(b)(iv), Respondent states it has demonstrated that it had no knowledge of Complainant, and it had no reason to have any knowledge of Complainant’s small business in July 2018. Moreover, any alleged consumer confusion is entirely de minimis when accounting for Respondent’s high volume of sales, particularly when Complainant has utterly failed to demonstrate its actual sales volume, cost of products, or other relevant information. Particularly with respect to Respondent, which has reached annual revenues between approximately USD 19 million and USD 22 million, it does this through tens of thousands of monthly subscribers. Therefore, three or four customers that confuse Complainant with Respondent is miniscule as it amounts to at most 4/10,000 of Respondent’s consumers potentially voicing confusion. Further, Complainant’s evidence refers to post-purchase situations and not to situations where Respondent’s products were mistakenly perceived as Complainant’s products. For this reason, the Panel can also consider either terminating this proceeding or proceeding to a decision and denying the relief sought, as the first-filed Lawsuit will allow Respondent to test the veracity and full extent of Complainant’s alleged confusion in the marketplace.
Here, as Respondent contends, (i) Complainant does not have a registration covering any of the Domain Names; (ii) Complainant’s registration did not exist at the time Respondent purchased the Domain Names along with 19 other domain names; and (iii) Complainant has not introduced any actual evidence to show that it has exclusive rights to use PERSONA, much less PERSONA with the additional words “cosmetics”, “makeup”, or “skin”.
Respondent draws contrast from a case where the panel noted that a presumption of bad faith may arise in the context of a famous or widely known trademark, whereas here Complainant admits it is a small business that started in 2016 and presents no evidence that its mark is a famous or widely known. Respondent argues that given Complainant is a small newcomer to a crowded field of third-party PERSONA mark users, many with rights senior to Complainant, it is questionable whether Complainant has any exclusive rights, let alone whether its mark is famous or widely known.
Respondent asserts that while Complainant claims it is entitled to a finding of bad faith because Respondent knew or should have known of the use of the PERSONA trademark prior to acquiring the Domain Names, Respondent states it had no actual knowledge, and had no reason to have knowledge, of Complainant in July 2018, when Respondent acquired the Domain Names, which do not match Complainant’s PERSONA registration. Further, Respondent claims Complainant is not well known among other more senior users of the PERSONA mark in the United States. And Respondent emphasizes that unlike cases cited by Complainant, where the panel relied on unchallenged evidence submitted by a complainant, as well as inferences drawn pursuant to Paragraph 14(b) of the Rules (when a respondent has defaulted), Complainant is not entitled to such a presumption here, and therefore may not prevail on such grounds.
7. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. Those elements are as follows:
(i) the Domain Names registered by Respondent are 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 Names; and
(iii) Respondent has registered and is using the Domain Names in bad faith.
As a preliminary point, the Panel notes that Respondent has asserted that citations to UDRP cases where the respondent has defaulted (i.e., failed to submit a response) are of no persuasive value, especially as Respondent has submitted a Response in this case. The Panel disagrees with this blanket proposition. WIPO Overview 3.0, section 4.3, notes that because “the burden of proof [is] on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Instead, a panel may find (just as this Panel has in certain other cases) that – despite a respondent’s default – a complainant has failed to prove its case. In other words, UDRP panels must review the evidence in each case and carefully assess the elements of the Policy to determine whether a complainant has proven its case, even when the respondent has defaulted. Further, the panel’s reasoning should be reflected in the decision. See paragraph 15(d) of the Rules (panel’s decision shall be in writing and provide the reasons on which it is based). Thus, while a UDRP panel should be careful, in a case where a respondent has submitted a response, not to draw inferences under paragraph 14(b) of the Rules that might otherwise be appropriate when there is a default, there is no reason to avoid citing a previous case decided on a default basis, where the facts are similar to the extant case and where the panel’s reasoning in that prior case is instructive and presents a reliable and persuasive analysis under the Policy.
(i) Identical or Confusingly Similar
The Panel finds that Complainant has provided evidence of rights in the trademark PERSONA, as evidenced by the mark’s registration on the principal register of the USPTO and use of the mark in commerce. See Factual Background section, supra. This constitutes prima facie evidence satisfying the standing threshold of the first element of the Policy. See WIPO Overview 3.0, section 1.2.1.3 Respondent has disputed that Complainant has exclusive rights in the PERSONA mark, particularly as there are allegedly other PERSONA mark users with rights senior to Complainant. However, Complainant’s registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its owner, securing exclusive rights in connection with “cosmetics; cosmetics and make-up” in International Class 3. The third-party marks referenced by Respondent appear to cover goods or services unrelated Complainant’s products and thus do not undermine Complainant’s rights in its PERSONA mark for cosmetics and makeup. Nor does the existence of a corresponding third party mark generally stand in the way of a complainant showing rights in a mark under the Policy. Although Respondent in the Lawsuit may be indirectly challenging Complainant’s rights by way of its motion to dismiss, there has been no disposition in that action, and Complainant’s registration remains valid. Moreover, Respondent has not presented this Panel with any facts or arguments to support a finding that Complainant’s registration is subject to cancellation. See Modern Vascular, LLC v. Sean Hay, JCMA Inc and Modern Vascular & Vein Center LLC, supra. Relatedly, the Panel takes notice (from exhibits attached to Respondent’s Response and a search of the USPTO website) that Respondent has filed several applications with the USPTO for the mark PERSONA. Some of those applications have been refused and are apparently on appeal, while other recent applications are facing oppositions, including from Complainant; those proceedings are apparently suspended pending the federal Lawsuit.
Respondent has also contended that even if Complainant has rights in its PERSONA trademark, the Domain Names do not match Complainant’s mark registration and the mark cannot be extended to terms that may become associated with Complainant’s business. As indicated by section 1.7 of WIPO Overview 3.0, panels view the first element of the UDRP largely as a threshold test concerning a trademark owner’s standing to file a complaint. Further, the test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. See Aetna Inc. v. On behalf of help-aetna.com owner / Whois Privacy Service / Manager / Knowbe4, WIPO Case No. D2021-1565. Numerous UDRP decisions have found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8.
The Panel determines that the Domain Names incorporate Complainant’s PERSONA mark in its entirety, while adding the descriptive terms “cosmetics, “makeup”, and “skin”. This combination in the Domain Names, rather than distinguishing them from Complainant’s trademark, affirms confusing similarity with Complainant’s mark. The PERSONA mark is the dominant feature in each of the Domain Names, and each of the descriptive terms are directly associated with Complainant’s business offerings – cosmetics and skincare products – while one of the Domain Names, <personacosmetics.com>, not only encompasses the PERSONA mark but is identical to Complainant’s company name, Persona Cosmetics (disregarding the gTLD). See WIPO Overview 3.0, section 1.11; see also Ciro Paone S.p.A. v. Mark Schneider, WIPO Case No. D2020-0234 (the addition of the term “clothing” does not prevent a finding of confusing similarity with complainant’s KITON mark, taking into account that, besides from being a generic term, “clothing” is directly associated with complainant’s business manufacturing and selling clothes and accessories).
Accordingly, the Panel finds that the Domain Names are confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
Regarding the second element of the Policy, section 2.1 of the WIPO Overview 3.0 states in relevant part that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.”
Here, the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the Domain Names, thus shifting the burden to Respondent. Complainant’s allegations showing Respondent’s lack of rights or legitimate interests in the Domain Names are outlined above in section 6.A.ii, above. In particular, Complainant has not authorized Respondent to use Complainant’s PERSONA trademark. Moreover, Respondent is not commonly known by the Domain Names; instead, Respondent is Vitamin Packs, Inc. d/b/a Persona Nutrition. See WIPO Overview 3.0, section 2.3 (respondent must be commonly known by the relevant moniker (e.g., a personal name, nickname, corporate identifier), apart from the domain name). While the Domain Names include the word “persona”, the other descriptive terms are unrelated to Respondent’s business. Further, Complainant alleges that Respondent has not used the Domain Names for a legitimate noncommercial or fair use, nor used them in connection with a bona fide offering of goods or services. Rather, Complainant claims Respondent is using the Domain Names to confuse Internet users and capitalize on Complainant’s goodwill in its PERSONA trademark, diverting them to Respondent’s own domain name, <personanutrition.com>, by incorporating Complainant’s PERSONA mark in the Domain Names, along with generic terms relating to Complainant’s company name and line of business. Further, Complainant has asserted that Respondent has engaged in typosquatting with respect to the Domain Name <personacosmetics.com>, which is identical to Complainant’s company name and its domain name <personacosmetics.co>, except for the gTLD.
Paragraph 4(c) of the Policy provides that a respondent can establish rights or legitimate interests in a domain name by demonstrating of any of the following circumstances:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue
Respondent relies on paragraphs 4(c)(i) and (iii) of the Policy, contending that it has used the Domain Names in connection with a bona fide offering of goods or services and used them fairly. The Domain Names were acquired in 2018 as part of a package of 22 domain names at a time before Complainant had obtained its trademark registration for its PERSONA mark (although Complainant’s trademark application had been already filed) and when Respondent states it had no knowledge of Complainant. For this reason, there can be no typosquatting. Respondent further contends that the Domain Names are not covered by Complainant’s PERSONA registration, that Respondent’s business name, Persona Nutrition, is as close to the Domain Names as Complainant, and that it is questionable whether Complainant can exclude others from the use of the term “persona”. Respondent contends it is fair for it to use “PERSONA-formative” domain names to support its Persona Nutrition business. In particular, Respondent states it is using the Domain Names to help capture additional web traffic for its own goods and services, without intent to misleadingly divert consumers or tarnish Complainant’s PERSONA mark.
The Panel determines that this is not a case of typosquatting. However, the Panel disagrees with Respondent’s contention that Respondent’s business name, Persona Nutrition, “is as close to the Disputed Domain Names as Complainant” and that the use of the “PERSONA-formative” Domain Names – each of which refer to Complainant’s trademark, company name and product offerings – is fair. The purchase of the Domain Names alone – which do not match Respondent’s company name (Vitamin Packs, Inc. d/b/a Persona Nutrition) and instead align with Complainant’s registered PERSONA mark, company name (i.e., Persona Cosmetics) and product offerings – does not give rise to any rights or legitimate interests in them. See e.g., National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118 (“If mere registration of the domain names were sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests [….]”). Moreover, the question of Respondent’s knowledge of Complainant goes more to the issue of bad faith, discussed below. While Respondent states it has shown more sales success and consistent use of its name than Complainant, this does not justify using the Domain Names, which by Respondent’s own admission are unrelated to Respondent’s business4 and instead effectively imitate Complainant (or suggest sponsorship or endorsement by Complainant) by means of combining the entirety of Complainant’s registered PERSONA trademark as the dominant element in the Domain Names, along with the terms “cosmetics”, “makeup”, and “skin”, which refer to Complainant’s company name and its cosmetic and skin care product offerings, and have no meaning related to vitamins and supplements. See Bulgari S.p.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Sergejs Grinfelds, WIPO Case No. D2021-0425 (disputed domain name effectively impersonates or suggests sponsorship or endorsement by complainant, by including the entirety of complainant’s BULGARI trademark as the dominant element in the domain name, along with the term “hotel” and the geographic indicator “London”).
Respondent has admitted that it “is using the Disputed Domain Names to help capture additional web traffic for its own goods”. In this admission, Respondent acknowledges that it is using the Domain Names, which the Panel observes are unrelated to Respondent’s business and instead incorporate Complainant’s PERSONA trademark and terms related directly to Complainant’s name and business, to divert users to Respondent’s website. In particular, the Domain Names redirect to Respondent’s website at <personanutition.com>. This use of the Domain Names to bring users to Respondent’s website has nothing to do with the descriptive terms in the Domain Names involving cosmetics, makeup or skin care. This type of misdirection is not a bona fide or fair use of the Domain Names. See WIPO Overview 3.0, section 2.5.1 (“Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.”). Instead, Respondent’s use maps to bad faith use, using the Domain Names “to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site”. See Policy, paragraph 4(b)(iv).
While Respondent might have a legitimate business operating under its own name, Persona Nutrition (even without a registered trademark),5 this does not justify using another’s unrelated company’s trademark along with terms that imitate that company’s name and product offerings in a confusing manner in the Domain Names, to redirect to Respondent’s website. See Dollar Bank, Federal Savings Bank v. Moniker Privacy Services / Shaun Hedges, Accueil Des Solutions Inc, WIPO Case No. D2016-0454 (“Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but is rather confusing Internet users and misdirecting them to the Respondent’s website”); and Wal-Mart Stores, Inc. v. Walter Nayda, WIPO Case No. D2008-1265 (respondent had no legitimate interests in a domain name used “to divert Internet users from what appears from the domain name to be a website associated with Complainant to a website which is in fact not associated with Complainant in any way”).
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Names, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
(iii) Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include that “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
As discussed above, the Panel determines that Respondent’s use of the Domain Names, comprised of Complainant’s PERSONA mark and descriptive terms unrelated to Respondent’s business, to divert Internet users to Respondent’s own site – or as Respondent put it, “to help capture additional web traffic for its own goods and services” – is bad faith use. The Domain Names incorporate Complainant’s registered PERSONA trademark as the dominant element, and include descriptive terms that are concededly unrelated to Respondent’s business and instead relate directly to Complainant’s company name and its cosmetics and makeup product offerings. Respondent has emphasized that “Complainant does not demonstrate that Complainant and Respondent are business competitors or that they are engaged in similar lines of business – Complainant offers exclusively cosmetics while Respondent offers vitamin and supplements.” Nonetheless, this statement demonstrates that Respondent’s use of the Domain Names, comprised of terms that are not in a “similar line […] of business” to Respondent, is bad faith use. They are being used “to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site”. See Policy, paragraph 4(b)(iv); see also WIPO Overview 3.0, section 3.1.4. Such use may disrupt Complainant’s business even if Complainant and Respondent are not direct competitors. See WIPO Overview 3.0, section 3.1 (paragraph 4(b) of the Policy provides a list of “non-exclusive scenarios” that constitute evidence of a respondent’s bad faith); see also, e.g., Antargaz v. R.J. van Hulsbergen, PropaanCollectief.nl B.V, WIPO Case No. D2021-0395 (finding bad faith where, at the time of filing, the disputed domain name redirected users to the respondent’s website with competing goods and services).
Complainant has submitted evidence of actual confusion, which Respondent has attempted to minimize. If Respondent were using descriptive terms in the Domain Names that were arguably related to Respondent’s own business, this point might merit closer scrutiny. But where the Domain Names are comprised of Complainant’s PERSONA trademark along with terms that are unrelated to Respondent’s business and instead imitate Complainant’s company name and product offerings, even the small amount of actual confusion caused by the Domain Names, as demonstrated by Complainant, is unjustified.
The Panel observes that the more finally balanced question in this case is whether the Domain Names were registered in bad faith. Complainant has contended that UDRP panels have consistently found bad faith registration where the respondent knew or should have known of the use of a trademark prior to acquiring a disputed domain name. Respondent, on the other hand, has explained that it purchased the Domain Names as part of a package of 22 domain names, and emphasizes repeatedly that it “had absolutely no knowledge of Complainant or its purported trademark rights when it acquired the Disputed Domain Names on July 3, 2018”.
The Panel considers the fact that Respondent purchased the domain names as part of a package does not excuse Respondent from due diligence. Indeed, this excuse applied at its logical extreme would provide a basis for any respondent who buys numerous domain names to deny responsibility. Rather, the Policy, paragraph 2(b), which sets forth the representations of a domain name registrant, provides in relevant part that “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party” and “[i]t is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The directives of paragraph 2(b) of the Policy are particularly apposite here, where Respondent has been advised by sophisticated counsel and registered the Domain Names that incorporate not only the PERSONA mark, but also descriptive terms that are unrelated to Respondent’s business (i.e., vitamins and supplements).
This case raises the question of willful blindness on the part of Respondent in acquiring the 22 domain names, including the Domain Names with descriptive terms that Respondent acknowledges are unrelated to its business. WIPO Overview 3.0, in section 3.2.3, provides that “panels have held that especially domainers undertaking bulk purchases or automated registrations have an affirmative obligation to avoid the registration of trademark-abusive domain names”. The WIPO Overview 3.0 provides further that;
“[n]oting registrant obligations under UDRP paragraph 2, panels have however found that respondents who (deliberately) fail to search and/or screen registrations against available online databases would be responsible for any resulting abusive registrations under the concept of willful blindness; depending on the facts and circumstances of a case, this concept has been applied irrespective of whether the registrant is a professional domainer.” Id.
In this case, both Complainant and Respondent are located in the United States on its West coast. While Respondent affirms it was unaware of Complainant and its PERSONA mark, it has never explained or tried to justify why it would register the Domain Names, comprised of the PERSONA mark and terms unrelated to Respondent’s business. The combination of the term “persona” with the words “cosmetics”, “makeup”, and “skin” is not common, nor are they descriptive of Respondent’s vitamins and supplement business. A simple USPTO search would have disclosed Complainant’s trademark application dated May 3, 2018, two months before Respondent acquired the Domain Names. Further, a simple Google search would have disclosed Complainant’s website, which has prominently featured its PERSONA mark and its Persona Cosmetics company name since as early as May 2017, if not earlier. The Internet Archive’s Wayback Machine, of which the Panel takes public notice,6 demonstrates that Complainant’s commercial website was operating from at least as early as May 2017, offering cosmetics and makeup for more than a year before Respondent acquired the Domain Names.
In this case, particularly where Respondent acquired the Domain Names comprised of not only Complainant’s PERSONA mark (which stood at the application phase), but also descriptive terms that are wholly unrelated to Respondents line of business, the Panel determines that Respondent’s willful blindness amounts to bad faith registration. Respondent, who is represented by sophisticated intellectual property legal counsel, could have conducted such searches as part of the due diligence for its “broad corporate rebranding strategy”. Such diligence is especially important when registering domain names admittedly unrelated to its own business. Respondent could also have ceased using the Domain Names to redirect users to its own website, once it was aware that they were and are confusingly similar to Complainant’s trademark, company name and product offerings – but it has chosen not to do so, hence the bad faith use.
In conclusion, the Panel determines that, for all of the above reasons, the Domain Names were registered and are being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy.
8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <personacosmetics.com>, <personamakeup.com>, and <personaskin.com>, be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Date: October 19, 2021
1 Persona Cosmetics, Inc. v. Societe des Produits Nestle S.A., et al., 2:21-cv-04644.
2 The WIPO Overview 3.0 states further that “[b]y design, the UDRP system preserves parties’ court options before, during, and after a UDRP proceeding; as indicated by UDRP paragraph 4(k), the UDRP does not bar either party from seeking judicial recourse.”
3 Cf. WIPO Overview 3.0, section 1.2.2 (“Complainants relying on trademark registrations listed solely on the USPTO Supplemental Register are expected to show secondary meaning in order to establish trademark rights under the Policy because under US law a supplemental registration does not by itself provide evidence of distinctiveness to support trademark rights”).
4 Respondent has acknowledged that “Respondent uses the Disputed Domain Names to support its vitamins and supplements business, which does not directly compete with Complainant’s makeup business.”
5 Respondent has claimed it might even have senior rights based on its sales success; however, the Panel notes that Respondent has provided no evidence to demonstrate that it has rights senior to Complainant for the mark PERSONA for use in connection with “cosmetics; cosmetics and make-up” in International Class 3.
6 See WIPO Overview, section 4.8 (noting the under the general powers of the panel articulated inter alia in paragraphs 10 and 12 of the Rules, a panel may undertake limited factual research into matters of public record if the information is useful in assessing the case merits and reaching a decision, and this may include consulting historical resources such as the Internet Archive (“www.archive.org”)).