WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Begum Ozdamar on behalf of Kosan Kosmetik Sanayi Ve Ticaret Anomin Sirketi v. Kieran Flynn, Chem - Marks Limited

Case No. DIE2016-0002

1. The Parties

The Complainant is Begum Ozdamar on behalf of Kosan Kosmetik Sanayi Ve Ticaret Anomin Sirketi of Gebze, Kocaeli, Turkey, represented by Philip Lee Solicitors, Ireland.

The Registrant is Kieran Flynn, Chem - Marks Limited of Louth, Ireland.

2. The Domain Name and Registrar

The disputed domain name <flormar.ie> is registered with IE Domain Registry Limited (“IEDR”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2016 via email and in hardcopy on May 3, 2016. On April 21, 2016, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On April 22, 2016, IEDR transmitted by email to the Center its verification response confirming the Registrant as the registrant and providing contact details.

The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceeding commenced on May 9, 2016. In accordance with the Rules, paragraph 5.1, the due date for Response was June 7, 2016. The Complainant requested a suspension of the administrative proceeding for 30 days in order to explore a settlement on June 3, 2016. The administrative proceeding was suspended on June 6, 2016.

The Registrant sent an email to the Center on June 6, 2016.

On June 28, 2016 the Complainant requested re-institution of the proceeding. On June 28, 2016, the Center notified the parties that the proceeding was reinstituted and that the Response was due on June 29, 2016. The Registrant did not, however, submit any formal response. On July 1, 2016, the Center notified the parties that it would commence the panel appointment process.

The Center appointed Adam Taylor as the sole panelist in this matter on July 11, 2016. 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, established in Turkey, is an international supplier of cosmetics. Its website is at “www.flormar.com”.

The Complainant owns International Trade Mark No. 1123803 for the stylized word “flormar” in class 3, designated in Ireland on January 18, 2012.

The disputed domain name was registered by the Registrant on June 4, 2013.

5. Parties’ Contentions

A. Complainant

A summary of the Complainant’s contentions is as follows:

The Complainant produces high quality cosmetic products under the mark FLORMAR, which is widely recognized amongst cosmetics customers. The Complainant has been selling Flormar products internationally since 2000 and now exports to more than 80 countries. The Complainant has expended a substantial amount of money in promoting its brand.

The Complainant uses the Twitter handle @flormar_irl and has a dedicated Irish Facebook page.

The disputed domain name unlawfully incorporates the Complainant’s trade mark and is confusingly similar to the Complainant’s trade mark.

The activities carried on by the Registrant at the website at the disputed domain name involve identical or confusingly similar goods and services to those in class 3 for which the Complainant’s mark is registered.

The Registrant has no rights in law or legitimate interests in the disputed domain name.

The Registrant has not made any legitimate offering of goods or services under the mark. Instead, the Registrant’s website is not responding.

The Registrant has not acquired any trade mark rights in the mark FLORMAR and has not been commonly known by this name.

The Registrant does not on its website disclose its relationship or lack thereof with the Complainant and use of the disputed domain name indicates that the Registrant is authorized to act on behalf of the Complainant. In fact, the Registrant was formerly an authorised distributor for the Complainant under a distribution agreement. The Registrant acquired no rights in the Complainant’s trade marks by virtue of the distribution agreement and is not now associated with the Complainant.

The Registrant has no authority to offer the Complainant’s products and so can have no legitimate reason to use the disputed domain name.

The Registrant has intentionally sought to confuse and divert consumers seeking access to the Complainant’s website and products.

The word “Flormar” is invented and can only have been chosen to create an association with the Complainant.

The above factors are also indicative of registration and/or use of the disputed domain name in bad faith.

The Registrant has also registered the Twitter handle @flormar_ireland, which is further evidence of registration in bad faith.

Given the Complainant’s substantial reputation in Europe, as well as the prior distributorship arrangement between the parties, the Registrant clearly knew of the Complainant’s mark when it registered the disputed domain name many years after the Complainant started using the mark and some 18 months after registration of the Complainant’s trade mark no. 1123803.

B. Registrant

The Registrant did not file a Response.

6. Discussion and Findings

A. Identity of Complainant

The Panel is unclear as to why the Complaint names an individual as the Complainant “on behalf of” the company specified. The Complaint does not suggest that the individual owns any relevant rights or otherwise has any direct interest in the case. In fact, the Complaint proceeds on the assumption that the company is the Complainant and the Panel does likewise.

B. Identical or Misleadingly Similar

The first condition in paragraph 1.1 of the IEDR Policy is that the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights.

Under paragraph 1.3.1 of the IEDR Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”. The Complainant’s registered trade mark no. 1123803 therefore constitutes a “protected identifier” for the purpose of the IEDR Policy.

Accordingly, the Panel concludes that, disregarding the country-code Top-Level Domain (ccTLD) suffix “.ie”, the disputed domain name is identical to a protected identifier in which the Complainant has rights.

C. Rights in Law or Legitimate Interests

The second condition in paragraph 1.1 of the IEDR Policy is that the Registrant has no rights in law or legitimate interests in respect of the disputed domain name.

The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Registrant to rebut the presumption of absence of rights in law or legitimate interests thereby created. See, e.g., Travel Counsellors plc and Travel Counsellors (Ireland) Ltd v. Portlaoise Travel Limited, WIPO Case No. DIE2006-0001.

Paragraph 3.1 of the IEDR Policy specifies three non-exhaustive factors which may be considered as evidence of rights or legitimate interests including, in paragraph 3.1.1, where the Registrant can demonstrate that, before being put on notice of the Complainant’s interests in the disputed domain name, it has made demonstrable good faith preparations to use the disputed domain name in connection with a good faith offering of goods or services, or operation of a business. The Panel has not been provided with evidence of such preparations or use of the disputed domain name.

Nor is there any evidence that paragraphs 3.1.2 or 3.1.3 of the IEDR Policy apply in the circumstances of this case.

The Panel finds that the Complainant has established a prima facie case of lack of rights in law or legitimate interests and there is no rebuttal by the Registrant.

The Panel concludes that the Registrant has no rights in law or legitimate interests in the disputed domain name and that the second condition in paragraph 1.1 of the IEDR Policy has therefore been satisfied.

D. Registered or Used in Bad Faith

The third condition in paragraph 1.1 of the Policy is that the disputed domain name has been registered or is being used in bad faith.

As to registration in bad faith, the Complainant asserts that, when it registered the disputed domain name, the Registrant was aware of the Complainant as a result of the Complainant’s alleged reputation and of a “prior distribution arrangement between the parties”. While the Complainant states elsewhere that the distribution contract has now been terminated, it is not entirely clear whether the distribution relationship was continuing at the time of registration of the disputed domain name. The Complainant does not at any point identify the period of the appointment, let alone exhibit the distribution contract.

If the disputed domain name was registered after termination of the distribution contract, the Panel would have little difficulty in concluding in the circumstances of this case that the disputed domain name was registered in bad faith, given that it reflects the Complainant’s exact trade mark and given the lack of any explanation from the Respondent. However, registration in bad faith is less clear if the disputed domain name was registered during the period, and in the context, of the distribution contract.

The water is muddied further by the lack of a clear explanation from the Complainant as to how the disputed domain name has been used. The Complainant has not exhibited any website screenshots (or indeed supplied any other evidence relevant to bad faith). When visited by the Panel, there was no website available at the disputed domain name. In the Complaint, the Complainant says at one point that the website was not responding but, elsewhere, the Complaint also implies that formerly there was a website at the disputed domain name. For example, the Complainant claims that the Registrant offered goods and services which were similar to those for which the Complainant’s trade mark was registered and that the site failed to disclose the relationship with the Complainant or lack thereof.

The Complaint therefore raises many questions about the exact nature and timing of the alleged objectionable use including whether this arose before or after the period of the distribution contract.

On the other hand, the Complainant does at least clearly assert in the Complaint (a) that the distribution agreement has now been terminated and (b) that the Registrant retains no legitimate reason to use the disputed domain name.

Unlike in the case of the Uniform Dispute Resolution Policy, under the IEDR Policy a complainant is only required to prove registration or use in bad faith. In the Panel’s view, even if the Registrant registered the disputed domain name in good faith in the context of the distribution agreement, the refusal by the Registrant to transfer the disputed domain name to the Complainant after termination is liable to constitute use in bad faith in circumstances where the Registrant had no legitimate reason to retain the disputed domain name and where the disputed domain name reflects the Complainant’s distinctive trade mark without adornment.

The Panel is conscious that the Registrant has not filed a Response in this case. The only communication from the Registrant which has been placed before the Panel is an email sent to the Center in the course of this case in which the Registrant simply stated that it “declined to sell the domain to a Turkish company and their agents in Dublin” and inviting contact if further information was required. The Registrant has therefore denied neither the former existence of the distribution relationship nor the Complainant’s assertion of the Registrant’s lack of a legitimate reason to retain the disputed domain name. Furthermore, the Registrant’s reference to its former distribution partner simply as “a Turkish company”, without elaboration, indicates a degree of evasiveness on the part of the Registrant.

While this is a highly marginal case in view of the inadequacies in the Complaint outlined above, nonetheless the Panel concludes from the foregoing that the Complainant has just about established on a prima facie basis (per paragraph 1.4 of the IEDR Policy) that the Registrant has used the disputed domain name in bad faith and that the third condition in paragraph 1.1 of the IEDR Policy has therefore been satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name <flormar.ie> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Dated: July 20, 2016