WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natura Cosméticos S/A., Indústria e Comércio de Cosméticos Natura Ltda. v. Jarno Vastamaki
Case No. DTV2012-0007
1. The Parties
Complainant is Natura Cosméticos S/A. and Indústria e Comércio de Cosméticos Natura Ltda. of the City of Itapecerica da Serra and City of Cajamar respectively, State of São Paulo, Brazil, represented by Ricci Advogados Associados, Brazil.
The Respondent is Jarno Vastamaki of Mantta, Finland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <natura.tv> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2012. On April 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2012. The Response was filed with the Center on May 7, 2012.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 14, 2012. 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
Complainant is the owner of registrations for the word, and word and design, trademark NATURA in Brazil and various other countries.1 In its Complaint, Complainant in particular draws attention to: registration of the word trademark NATURA at Brazil’s National Institute of Industrial Property (INPI), number 815082649, granted on June 21, 1994, in Brazilian class 3:20, covering cosmetics, and; registration on the trademark register of the French Intellectual Property office (INPI), number 9821, granted on April 24, 1953, in international class 3, covering cosmetics and related products, and forming the priority basis for registration under the Madrid System, international registration number 232091, dated May 27, 1960 (owned by a related entity). Complainant further provides evidence that its NATURA trademark has been recognized by the Brazilian trademark office as a highly renowned trademark in Brazil, which recognition accords it special protection under Brazilian law.
Complainant is a manufacturer and distributor of cosmetics, perfumes and related products, with sales in Brazil and other countries, including Argentina, Peru, Bolivia, Chile, Colombia, Venezuela, France and Mexico. Complainant has registered a substantial number of domain names incorporating its NATURA trademark, including (but not limited to) <natura.com> and <natura.com.br>. Complainant operates a commercial Internet website, inter alia, at “www.natura.net”.
According to the Registrar verification, Respondent is registrant of the disputed domain name. According to a whois.nic.tv printout furnished by the Center, the record of registration of the disputed domain name was created on September 18, 2004. Respondent has provided evidence that the disputed domain name was initially registered by a family member (Jaakko Vastamaki) on June 28, 2000, and subsequently transferred to him. This becomes relevant because that family member registered another domain name, <luonto.tv>, on July 12, 2000. Respondent registered <natur.tv> on February 21, 2002.
Complainant has provided a printout showing that when the disputed domain name is entered into a browser in Brazil, the disputed domain name is associated with a “free” Sedo parking page. That Portuguese language parking page includes a box to enter search terms, and lists various categories of products and services, including automobiles, electronics and games. There is no heading or link associated with cosmetics or perfumes, although there is a lifestyle heading (“estilo de vida”) with various subheadings, though none directly associated with cosmetics or perfumes. Respondent has provided a printout of the free Sedo parking page accessed from Finland that includes only one sponsored link (in Finnish) that has no relationship to cosmetics or perfumes.2
Respondent has provided evidence in the form of Finnish language reference books that the term “natura” is synonymous with “luonto”, and that “luonto” has the meaning “nature” in Finnish.3 Respondent asserts that he is a founding member and longtime board member of a Finnish environmental and nature conservancy group Dodo (“www.dodo.org”), and is a locally and regionally active member of the political Green League since 2003. Respondent has not provided any specific documentation regarding these activities, other than reference to the website of Dodo.
There is no evidence that Complainant attempted to contact Respondent before it initiated this proceeding.
The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the trademark NATURA as evidenced by registration in Brazil, France, under the Madrid System, and otherwise, and as confirmed by use in commerce in Brazil and other countries. Complainant indicates that its mark is recognized as highly renowned in the trademark law of Brazil. According to Complainant this means the mark is assured of special protection in all branches of activity under Brazilian law.
Complainant contends that the disputed domain name is a reproduction of its trademark, and that this causes consumer confusion.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. According to Complainant: (1) Respondent has no prior rights in the NATURA trademark (2) Complainant has not authorized Respondent to use its trademark, and there is no relationship between Complainant and Respondent; and (3) Respondent is engaged in unfair practices with respect to Complainant’s trademark, referring to various provisions of the Paris Convention on the Protection of Industrial Property, to which Brazil, Mexico and the United States are parties.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent has ignored Complainant's rights in its trademark; (2) the disputed domain name reproduces “integrally” the corporate names and trademark of Complainant; (3) Respondent lacks rights or legitimate interests in the disputed domain name and/or its trademark, and (4) the disputed domain name “is using the same and well-known [sic] of the trademark NATURA to capture income through sponsored links and advertising, what proves total bad faith by the Respondent”.
Complainant indicates that it has successfully pursued disputed domain names under the Policy on several previous occasions, referring to Natura Cosméticos S.A., Industria e Comércio de Cosméticos Natura Ltda. v. Belize Domain Whois Service Lt, WIPO Case No. D2007-1165, Natura Cosméticos S/A and Indústria e Comércio de Cosméticos Natura Ltda. v. N/A, WIPO Case No. D2008-1128, Natura Cosméticos S/A, Indústria e Comércio de Cosméticos Natura Ltd. v. Ricardo Euzébio Ribeiro, WIPO Case No. D2010-1517, Natura Cosméticos S/A, Indústria e Comércio de Cosméticos Natura Ltda. v. Pedro Andrade Santos, WIPO Case No. D2010-1690 and Natura Cosméticos S/A, Indústria e Comércio de Cosméticos Natura Ltda.v. Hector Soto, WIPO Case No. D2012-0002 and attaching those decisions.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent contends that “natura” is a generic word meaning “nature” in the Finnish language, originating from the Latin language. Respondent alleges that it is synonymous with the Finnish word “luonto”, meaning “nature”. Respondent further alleges that the term “natura” continues to be used in Finnish, Polish and Italian in its original Latin form.
Respondent states that he registered <natura.tv>, <natur.tv> and <luonto.tv> to represent the generic concept of “nature” in the two official languages of Finland (Finnish and Swedish). Respondent indicates that “natur” means “nature” in Swedish.
Respondent contends that he is a founding member of an environmental group in Finland, and locally active in environmental politics, “[s]o it can be stated that I have had and still have a special interest in nature and legitimate noncommercial interest for the domain in question.”
Respondent states that Complainant has registered its trademark in some classes in several countries, but that it does not have “a universal right for the word ‘natura’ in all classes”. Respondent points out that there are a large number of trademark registrations for the term “natura” in the European Union, but that all of these registrations are restricted to a specific class or classes.
Respondent argues that his intended use of the disputed domain name has nothing to do with Complainant’s business or its products, cosmetics. Respondent contends that Complainant does not have exclusive rights over all uses of “natura”.
Respondent alleges that his Sedo account has not been actively used for a number of years, and that he does not receive (and has not received) any revenues from his parking page. Respondent further alleges that his parking page accessed in Finland “looks more humble than the version Complainant provided”, and that Sedo generates different parking pages in different countries.
Respondent requests the Panel to reject Complainant's request to order transfer of the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and commencement of the proceedings, and Respondent filed a Response. The Panel is satisfied that Respondent received adequate notice of these proceedings and was afforded a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief.
These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the word trademark NATURA in Brazil, France and other countries, and substantial evidence of use of that trademark in commerce (see Factual Background, supra). Respondent does not contest the validity of Complainant’s trademark registrations and use (although it does contest the scope of Complainant’s asserted rights). The Panel finds that Complainant has established rights in the trademark NATURA in Brazil, among other countries.
The disputed domain name <natura.tv> directly incorporates Complainant’s trademark, and adds the country code top-level domain “.tv”. The disputed domain name is identical to Complainant's trademark within the meaning of the Policy in the circumstances of this proceeding.
The Panel finds that Complainant has established rights in the trademark NATURA and that the disputed domain name is identical to Complainant’s trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue.” (Policy, paragraph 4(c))
Complainant has asserted that Respondent lacks rights or legitimate interests in the disputed domain name. because: (1) Respondent has no prior rights in the in the NATURA trademark; (2) Complainant has not authorized Respondent to use its trademark, and there is no relationship between Complainant and Respondent; and (3) Respondent is engaged in unfair practices with respect to Complainant's trademark, referring to various provisions of the Paris Convention on the Protection of Industrial Property, to which Brazil, Mexico and the United States are parties. Complainant has satisfactorily made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent argues that he is making a legitimate noncommercial use of the disputed domain name. Respondent argues that the term “natura” means “nature” in his local language (and other languages), that he is an active environmentalist, and that he registered the disputed domain name for some unspecified purpose unrelated to Complainant and its trademark-protected line of business.
Paragraph 4(c)(iii) of the Policy refers to “making” legitimate noncommercial use of a domain name as a means of establishing rights or legitimate interests. Such “making” typically requires some active use of a disputed domain name (or demonstrable preparations to use). There are, however, circumstances in which the passive holding of a disputed domain name may suffice to establish rights or legitimate interests. For example, in Pfizer v. Van Robichaux, WIPO Case No. D2003-0399, this panelist found that the passive holding by a product-liability attorney of a domain name incorporating a pharmaceutical brand name for prospective use in informing potential clients (in circumstances in which the attorney had undertaken similar activities in the past) established fair commercial use. Similarly, this panelist has observed that requiring prompt active use of a disputed domain name may not be warranted when there is a threat of litigation, and that a too strict standard of immediate use might inhibit free expression. See, e.g., Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000.
In the present proceeding, Respondent has owned registration of the disputed domain name for a decade and has not put it to an active use other than taking advantage of the free parking page offered by Sedo. Respondent has not indicated any concrete plans to put the disputed domain name to use, but has referred to a generalized right to retain the disputed domain name referring to “nature” because nature is one of his personal interests.
Because the Panel decides in favor of Respondent on grounds that Complainant has failed to establish bad faith registration and use, the Panel refrains from deciding whether under the circumstances presented here, Respondent might establish rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
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 are: “(i) circumstances indicating that [respondent has] registered or … acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent's] documented out-of-pocket costs directly related to the domain name; or (ii) [respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct; or (iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or; (iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 or location or of a product or service on [respondent’s] web site or location”.
Complainant has not argued that Respondent registered the disputed domain name for the purpose of selling it to Complainant or another party. The fact that Respondent has owned the registration for a decade without attempting to sell it argues against that intent. Complainant might have argued (but did not) that Respondent registered the disputed domain name to prevent Complainant from registering its trademark in a corresponding domain name. Here, in any event, there is no evidence that Respondent engaged in a pattern of such conduct. Complainant has not argued that Respondent has attempted to disrupt its business.
Complainant has argued that Respondent registered the disputed domain name to unfairly take advantage of the goodwill associated with Complainant’s well-known trademark in order to capture revenues from sponsored links and advertisements on the parking page to which the disputed domain name is directed. This typically falls under the paragraph 4(b)(iv) allegation that Respondent for commercial gain is attempting to attract Internet users to its website by creating a likelihood of confusion with Complainant's mark as to Complainant acting as source, sponsor, affiliate or endorser of Respondent’s website.
That suggestion is not persuasive in the circumstances of this proceeding. The “free” parking page to which Respondent has associated the disputed domain name exhibits a very general list of commercial subject matter headings that have no evident connection to Complainant or its trademark. There is nothing on the Sedo free parking page to indicate that it has been specifically tailored to Internet users entering the disputed domain name in a browser (there are no references to cosmetics or perfumes). There is little or no basis for an Internet user to draw the conclusion that Complainant somehow was acting as the source, sponsor, affiliate or endorser of this free parking page, which expressly states (at its base) that it was provided free to the domain name holder by Sedo. It is difficult for the Panel to discern any injury that may be suffered by Complainant or its trademark from this usage by Respondent.
This analysis is complicated by the fact that the Registrar, Sedo, may receive some revenues from the free parking page based on click-throughs. Assuming that Respondent is ultimately responsible for the content of its webpage, there is some attenuated level at which Respondent might be said to be acting for commercial gain (even if it is not directly receiving revenues). Here, however, Respondent has presented evidence that a search undertaken from his home country generates a parking page with a single sponsored link completely disassociated from Complainant and its trademark. The Panel is unwilling to attribute “bad faith” registration and use to Respondent on the basis of such an attenuated potential for third-party profit.
Complainant has understandably referred to four decisions under the Policy in its favor. These decisions illustrate the difference between bad faith conduct by domain name registrants, and the conduct of Respondent in this case. In Natura Cosméticos S.A., Industria e Comércio de Cosméticos Natura Ltda. v. Belize Domain Whois Service Lt,, WIPO Case No. D2007-1165, the respondent had registered <naturacosmeticos.net> and <naturaperu.net>. The first of these names expressly referred to Complainant's line of products in association with its trademark, and the respondent in that case offered on its website products competitive with those of Complainant. The panel in that case took specific note of these facts in assessing bad faith. In Natura Cosméticos S/A and Indústria e Comércio de Cosméticos Natura Ltda. v. N/A, WIPO Case No. 02008-1128, the respondent had registered <naturaportugal.com>, and had expressly included a reference to Complainant doing business in Portugal on its website (“Natura Brasil em Portugal”) while selling cosmetic products. The panel took specific note of these facts in assessing bad faith. In Natura Cosméticos S/A, Indústria e Comércio de Cosméticos Natura Ltd. v. Ricardo Euzébio Ribeiro, WIPO Case No. D2010-1517, the respondent had registered <perfumesnatura.com>, and offered links to products competitive with those of Complainant. Moreover, the respondent in that proceeding offered to sell the disputed domain name to Complainant for an amount substantially in excess of its out of pocket costs. The panel took specific note of these facts in assessing bad faith.4 In Natura Cosméticos S/A, Indústria e Comércio de Cosméticos Natura Ltda.v. Hector Soto, WIPO Case No. D2012-0002, the respondent had registered <tutiendanatura.com>, and used the associated website to sell products alleged to be those of Complainant without its authorization in circumstances which the panelist found to constitute bad faith.
In each of the foregoing cases, the respondent had used Complainant’s NATURA trademark to attract Internet users for purposes of offering to sell cosmetic or perfume products competitive with those of Complainant, and/or to offer the disputed domain name for sale to Complainant.
In the present proceeding, Respondent has used a free parking page offered by its Registrar in association with a “nonspecific” list of products and services that bear no evident relationship to Complainant or its products. The Panel is unwilling to draw from these facts an inference that Respondent was attempting to take unfair advantage of Complainant and its trademark for commercial gain. The Panel reaches this conclusion in light of the fact that Respondent, at times roughly coextensive with his registration of the disputed domain name, registered two additional domain names meaning “nature” in at least one of the official languages of Finland, suggesting that he was not attempting to take unfair advantage of Complainant and its trademark. These acts are consistent with his assertion that he was reserving the domain names for some future use in connection with his claimed interest in the environment.5
For the foregoing reasons, the Panel determines that Complainant has not demonstrated that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: May 28, 2012
1 Complainant has provided evidence of registration of the NATURA trademark, and related NATURA-combination trademarks, in a substantial number of countries.
2 The Panel has translated from the Portuguese, and relied on Google Translate for the Finnish.
3 Google Translate translates “luonto” (Finnish) to “nature” (English); and “natura” (Finnish) to "naturalistic" (English).
5 The Panel stresses that this decision takes into account the totality of its context. In different circumstances, registration of multiple domain names with similar meaning may have different implications.