WIPO Arbitration and Mediation Center

Alternative Dispute Resolution Proceeding

Case No. DSE2018-0034

1. Petitioner

The Petitioner is Glossier, Inc. ofthe United States of America, represented by CSC Digital Brand Services AB, Sweden.

2. Domain Holder

The Domain Holder is E.M.R. of France.

 

3. Domain Name and Procedural History

This Alternative Dispute Resolution proceeding relates to the domain name <glossier.se> (the “disputed domain name”).

This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”).

The WIPO Arbitration and Mediation Center (the “Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on June 6, 2018. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder’s default on July 9, 2018.

The Center appointed Jonas Gulliksson as the sole Arbitrator in this matter on July 23, 2018. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules.

4. Factual Background

The Petitioner is an American company active within the field of beauty products. Furthermore, the Petitioner is the holder of, inter alia, the international trademark Reg. No. 1221664 (designating, for example, the European Union (EU)) for GLOSSIER, registered on October 7, 2014.

The disputed domain name was registered on January 14, 2017.

5. Claim

The Petitioner claims that the disputed domain name <glossier.se> shall be transferred to the Petitioner.

6. Parties’ Contentions

A. Petitioner

The Petitioner was founded in 2012 and sells products in the areas of skincare, makeup and fragrance. These products are sold online through the Petitioner’s primary website under the domain name <glossier.com>. Furthermore, the Petitioner sells its products at permanent retail locations in New York City and Los Angeles, and at temporary “pop-up” locations which have included, among others, London and Paris.

The Petitioner is respected as a leader among beauty brands, and its website has generated significant interest and attention internationally among fans, media and competitors. According to “Similarweb.com” the Petitioner’s website received an average of 1.63 million monthly visits in the past six months. The Petitioner has also been highlighted by numerous publications and media outlets.

The disputed domain name contains the Petitioner’s GLOSSIER trademark in its entirety. The addition of the country code Top-Level Domain (“ccTLD”) “.se” does not alleviate the confusion between the disputed domain name and the Petitioner’s trademark. Thus, it is established that the disputed domain name is similar to the Petitioner’s trademark and that the first condition under the Policy is met.

The disputed domain name has been registered and used in bad faith. It was registered after the Petitioner’s first trademark registration for GLOSSIER, and after the registration of the Petitioner’s domain name <glossier.com>. It is obvious that it is the fame of the Petitioner’s trademark that has motivated the Domain Holder to register the disputed domain name. At the time of registration of the disputed domain name, the Domain Holder knew, or at least should have known, of the existence of the Petitioner’s trademarks.

The Domain Holder creates a likelihood of confusion with the Petitioner and its trademarks by registering a Domain name that is identical to the Petitioner’s GLOSSIER trademark. This demonstrates that the Domain Holder is using the disputed domain name to confuse and mislead Internet users looking for the Petitioner’s products. By creating this likelihood of confusion between the Petitioner’s trademark and the disputed domain name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, the Domain Holder has demonstrated an intent to capitalize on the fame and goodwill of the Petitioner’s trademarks in order to increase traffic to the subject website for the Domain Holder’s own pecuniary gain, as evidenced by the presence of multiple pay-per-click links posted on the Domain Holder’s website, some of which directly reference the Petitioner and/or its competitors.

The Domain Holder, at the time of initial filing of the Petition, had employed a privacy service to hide its identity, which past Panels have held to serve as additional evidence of bad faith registration and use. Prior to the Petition, the Petitioner tried to contact the Domain Holder through email, but did not receive any response.

The Domain Holder has no rights or legitimate interests in the disputed domain name. The Domain Holder is not sponsored by or affiliated with the Petitioner in any way, and the Petitioner has not given the Domain Holder permission to use the Petitioner’s trademark in any manner. The Petitioner has not found that the Domain Holder has any registered trademarks or trade names corresponding to the disputed domain name.

The term “glossier” is a dictionary word in English. According to the Merriam Webster English dictionary, the term came from the word “glossy” which means “having a surface luster or brightness”. The term was registered as a trademark for its arbitrary or suggestive association with the Petitioner’s beauty products. The Petitioner’s trademark is sufficiently distinctive not to have any meaning in commerce other than to reference the Petitioner’s business.

B. Domain Holder

The Domain Holder did not reply to the Petitioner’s contentions.

7. Discussion and Findings

A domain name may be deregistered or transferred to the party requesting dispute resolution proceedings if the following three conditions are fulfilled:

1. The domain name is identical or similar to:

a. a distinguishing product feature,

b. a distinguishing business feature,

c. a family name,

d. an artist’s name (if the name is not associated with someone who deceased a long time ago),

e. a title of another party’s copyrighted literary or artistic work,

f. a name that is protected by the Regulation concerning Certain Official Designations (1976:100),

g. a geographic designation or a designation of origin that is protected by the European Council’s Regulation (EU) 510/2006,

h. a geographic designation that is protected by the European Council’s Regulation (EU) 110/2008,

i. a geographic designation that is protected by the European Council’s Regulation (EU) 1234/2007, or

j. the name of a government authority that is listed in the registry that Statistics Sweden must maintain under the Swedish Code of Statutes SFS 2007:755 (Government Agencies Register Ordinance), or its generally accepted abbreviation,

which is legally binding in Sweden and to which the party requesting dispute resolution can prove its rights, and

2. The domain name has been registered or used in bad faith, and

3. The domain holder has no rights or justified interest in the domain name.

All three conditions must be met in order for the party requesting dispute resolution to succeed with a claim for transfer of the domain name.

A. The Domain Name is identical or similar to a trademark which is legally binding in Sweden and to which the Petitioner can prove its rights

The disputed domain name incorporates the Petitioner’s GLOSSIER trademark, with the addition of the ccTLD “.se”. The ccTLD is not distinguishing for the purposes of establishing identical or confusing similarity. Thus, the Arbitrator finds that the disputed domain name is identical to the Petitioner’s EU trademark, which is legally recognized in Sweden.

B. The Domain Name has been registered or used in bad faith

The disputed domain name was registered by the Domain Holder on January 14, 2017, which is more than two years after the international registration of the Petitioner’s GLOSSIER trademark, and more than four years after the Petitioner’s registration of the domain name <glossier.com>. Furthermore, the Petitioner has submitted evidence showing that the disputed domain name resolves to a site presenting advertising links for goods identical or similar to the goods marketed by the Petitioner under the Petitioner’s trademark.

In the light thereof, and considering the identity between the disputed domain name and the Petitioner’s trademark, it is in the Arbitrator’s view apparent that the disputed domain name was registered and is being used with knowledge of the Petitioner’s trademark rights and business. Thus, the Arbitrator finds that the disputed domain name was registered and has been used in bad faith.

C. The Domain Holder has no rights or justified interest in the Domain Name.

The Petitioner has stated that the Domain Holder has no rights of its own or justified interests in the disputed domain name, which incorporates the Petitioner’s trademark.

Having considered the submissions of the Petitioner, and the absence of a response from the Domain Holder, the Arbitrator finds that the Domain Holder is not connected with the Petitioner nor authorized to use the Petitioner’s trademark in the disputed domain name. The Domain Holder’s use of the disputed domain name – to host a page comprising pay-per-click links – does in the Arbitrator’s view not support that the Domain Holder have a legitimate interest in the disputed domain name. Neither does the Arbitrator find any other indications that the Domain Holder is making a legitimate noncommercial or fair use of the disputed domain name.

All in all, the Arbitrator finds that the Domain Holder has no rights or justified interest in the disputed domain name. The third element of the Policy is thus fulfilled.

8. Decision

As all the criteria are fulfilled, the requested relief of the Petitioner shall be granted and the disputed domain name <glossier.se> shall be transferred to the Petitioner.

9. Summary

The disputed domain name is identical to a trademark which is legally recognized in Sweden and to which the Petitioner can prove its rights.

In the light of the submitted evidence, the Arbitrator finds that the disputed domain name has been registered and used in bad faith.

In the light of the evidence and statements presented, the Arbitrator finds that the Domain Holder has no rights or justified interests in the disputed domain name.

Jonas Gulliksson
Date: July 30, 2018