WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Glimmer Body Art, LLC v. Renee Chidiac
Case No. DAU2013-0021
1. The Parties
The Complainant is Glimmer Body Art, LLC of Torrance, California, United States of America, represented by Conkle, Kremer & Engel, United States of America.
The Respondent is Renee Chidiac of Glenwood, New South Wales, Australia.
2. The Domain Names and Registrar
The disputed domain names <glimmerbodyart.com.au> and <glimmerbodyart.net.au> are registered with Web Address Registration Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2013. On August 2, 2013, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain names. On August 9, 2013, Web Address Registration Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2013. A short email communication was received from the Respondent’s email address on September 17, 2013.
The Center appointed Alistair Payne as the sole panelist in this matter on September 16, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a manufacturer and service provider of glitter tattoos and has been in business since 2007. The Complainant is based in the United States but trades in various countries and owns a United States trade mark registration for GLIMMER under Registration Number 4185805 and also device mark registrations for GLIMMER BODY ART in the United States under Registration No. 3,594,608 since March 24, 2009 and in the European Union under Registration No. 1118293 since January 4, 2012, and in Australia under Registration No. 1498883 since January 4, 2012. The Complainant maintains a number of websites for its products and services, including “www.glimmerbodyart.com”, and sells its products and services worldwide, including in Australia.
The Respondent registered the disputed domain names on March 4, 2013.
5. Parties’ Contentions
The Complainant submits that the disputed domain names are confusingly similar to its various registered trademarks as set out above.
The Complainant says that the Respondent is not known by the disputed domain names, has not been authorized by the Complainant to use or register its marks in any way and is not making a legitimate or noncommercial use of the disputed domain names. The Complainant submits that the Respondent is not making a bona fide offering of goods or services under the disputed domain names whether on her own account or in connection with its business.
The Complainant confirms that the Respondent took it upon herself to register the disputed domain names following initial approaches to the Complainant concerning the expansion of its business in Australia. The Complainant says that these discussions never went anywhere as it already had established distributorship arrangements in Australia. As a result the Respondent was never appointed an authorised agent, distributor or licensee of the Complainant in Australia and when approached by the Complainant’s counsel, on the one hand maintained in subsequent correspondence that she had registered the disputed domain names on the Complainant’s behalf but then refused to transfer the disputed domain names other than on payment of AUD 5000 plus transfer costs..
On this basis the Complainant submits that the Respondent both registered and has used the disputed domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
On September 17, 2013 the Center received a very short email from the Respondent. This filing is well out of time and in the Panel’s view adds nothing to the proceedings and as a result the Panel exercises its discretion under the Policy not to admit this filing to the proceedings.
A. Identical or Confusingly Similar
The Complainant has, as noted above, device mark registrations in the United States, Australia and a Community Trade Mark (CTM) for its main logo which consists of the mark GLIMMER BODY ART written in a stylized multi-coloured logo format. The words “Glimmer Body Art” are the most prominent feature of the device mark which has no other element apart from multicolored outlining around the words. The Panel has no difficulty in these circumstances in finding that the substantive elements of each of the disputed domain names are confusingly similar to the Complainant’s registered trade mark rights and in particular to trade mark Registration No. 1498883 in Australia, to CTM 118293 and to United States trade mark registration 3594608.
Accordingly, the Complaint succeeds under the first limb of the Policy.
B. Rights or Legitimate Interests
The Respondent registered the disputed domain names in March 2013 after having made contact with the Complainant with a view to the Respondent seeking to develop the Complainant’s business in Australia. According to the Respondent’s own email correspondence she did this on behalf of the Complainant but the Complainant submits entirely without its authorization. According to the Complainant these discussions never went further, the Respondent was never appointed its distributor and the Respondent was not known by any similar name nor was it offering bona fide goods or services under such a name. The Complainant followed up through its counsel quite promptly requesting transfer of the disputed domain names but the Respondent subsequently refused transfer without payment of her transfer costs and a payment of AUD 5000.
The Respondent has not sought to rebut the Complainant’s version of events which she could have been expected to do if there was a genuine dispute concerning the parties’ discussions and the circumstances of registration. In circumstances that the Respondent clearly knew of the Complainant’s mark and business and before conclusion of its discussions to be involved in distribution in Australia sought to register the corresponding disputed domain names without authority the Panel finds that the Respondent’s registration cannot be legitimate and that the Respondent had no right to do so. Her subsequent conduct in demanding a substantial price for the disputed domain names over and above the transfer costs only reinforces the Panel’s conclusion on this point.
Accordingly the Complaint succeeds in relation to the second element of the Policy.
C. Registered or Subsequently Used in Bad Faith
As noted above the Respondent only registered the disputed domain names after discussions with the Complainant concerning its business. Therefore the Respondent was quite clearly aware of the Complainant’s GLIMMER BODY ART mark and in fact acknowledged as such in her email of March 11, 2013 in which she notes that she has reserved the disputed domain names and adds, almost as a postscript, that this was of course on the Complainant’s behalf. The fact that she did this without the Complainant’s knowledge or authority and before any potential business arrangements had been finalised, subsequently refused to transfer the disputed domain names to the Complainant and then in negotiations with the Complainant’s counsel demanded the costs of transfer plus an additional sum of AUD 5000, in the Panel’s view only reinforces the overwhelming inference that this registration was made in bad faith.
Although, unnecessary under the Policy the Panel notes that if it had been required to do so it would also have found that the Respondent has used the disputed domain names in bad faith as a consequence of her refusal to acknowledge her earlier assertion that she had registered the disputed domain names on the Complainant’s behalf followed by her demand to the Complainant for considerably more than her out of pocket costs for the transfer of the disputed domain names.
As a consequence the Panel finds that the Complaint succeeds under the third limb of the Policy.
The Complainant has requested that, if successful, the disputed domain names should be transferred to it.
Under paragraph 4(i) of the Policy, the remedy of transfer is available only where the Complainant is otherwise eligible to hold the disputed domain names.
Schedule A, paragraph 2 of auDA’s Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs requires a registrant to be an Australian “as defined under the eligibility and allocation rules for each 2LD.”
Paragraph 1 of Schedule C of the Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs specifies that for a “.com.au” domain name, the registrant must be:
“e) an owner of an Australian Registered Trade Mark…”
As the owner of an Australian registered trademark, the Complainant qualifies as “Australian” for relevant purposes.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <glimmerbodyart.com.au> and <glimmerbodyart.net.au> be transferred to the Complainant.
Date: September 30, 2013