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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merle Norman Cosmetics, Inc. v. JH Kang

Case No. DCO2020-0013

1. The Parties

The Complainant is Merle Norman Cosmetics, Inc., United States of America (“United States”), represented by Quarles & Brady LLP, United States.

The Respondent is JH Kang, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <merlenorman.co> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2020. On February 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 24, 2020, the Registrar 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 Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2020.

The Center appointed Dawn Osborne as the sole panelist in this matter on April 3, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is the owner of the mark MERLE NORMAN registered, inter alia, in the United States as registration no. 1412879 for cosmetics and toiletries since October 14, 1986.

The Domain Name registered on April 8, 2019 has been pointed to pay-per-click links which lead to third party businesses competing with the Complainant. The Respondent has been the subject of a number of adverse decisions against it under the Policy.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

The Complainant is the owner of the mark MERLE NORMAN registered, inter alia, in the United States for cosmetics and toiletries since 1986.

The Domain Name registered in 2019 contains the Complainant’s MERLE NORMAN mark in its entirety to which only the country code Top-Level Domain (“ccTLD”) “.co” has been added which does not prevent the Domain Name from being identical to the Complainant’s MERLE NORMAN mark under the Policy.

The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.

The Domain Name has been pointed to a site with pay-per-click links that lead to third party businesses competing with the Complainant. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is bad faith registration and use misleading and diverting Internet users for commercial gain.

The Respondent has been the subject of a number of adverse decisions under the Policy for registration and use of domain names containing the trademarks of others.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Domain Name consists of the Complainant’s MERLE NORMAN mark (registered in the United States for toiletries and cosmetics since 1986) and the ccTLD “.co”.

Adding the ccTLD “.co” does not prevent the Domain Name from being identical to the Complainant’s mark, which is the distinctive component of the Domain Name.

Accordingly, the Panel holds that the Domain Name is identical for the purposes of the Policy with a mark in which the Complainant has rights.

As such the Panel holds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name.

The Respondent has used the website attached to the Domain Name for pay-per-click links marked MERLE NORMAN some of which offer competing goods and services to that of the Complainant. The Respondent does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods or services.

As such the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

C. Registered and Used in Bad Faith

The Respondent is using the Domain Name to profit by linking to third party websites competing with the Complainant in a confusing manner. Such registration and use is disruptive to the business of a competitor.

The reference to the Complainant’s trade mark MERLE NORMAN and the presence of links on the Respondent’s website to companies that operate in the same field as the Complainant makes it more likely than not that the Respondent was aware of the Complainant and its business, services, and rights when it registered the Domain Name

The Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website attached to the Domain Name and goods and services accessed through it.

Finally it appears that the Respondent has been the subject of a number of adverse decisions under the UDRP in proceedings brought against the Respondent by a number of different trade mark owners.

As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and is being used in bad faith.

7. 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 Name <merlenorman.co> be transferred to the Complainant.

Dawn Osborne
Sole Panelist
Date: April 9, 2020

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