WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Waterly Pharmaceuticals Pty ltd. v. Wang Mark

Case No. DUA2020-0024

1. The Parties

The Complainant is Waterly Pharmaceuticals Pty ltd., Australia, represented by Petosevic, Ukraine.

The Respondent is Wang Mark,China.

2. The Domain Name and Registrar

The disputed domain name <cemoy.com.ua> is registered with Internet Invest, Ltd. dba Imena.ua. (the “Registrar”).

3. Procedural History

The Complaint was filed in Ukrainian with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2020. On September 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2020, the Registrar transmitted by email to the Center its verification response disclosing the registrant’s contact details.

The Center sent an email communication to the Complainant on October 1, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 1, 2020.

The Registrar confirmed that the language of the Registration Agreement for the disputed domain name is English. On October 1, 2020, the Center sent an email communication in both English and in Ukrainian to the Parties regarding the language of the proceeding. On October 1, 2020, the Complainant submitted a translated Complaint in English. The Respondent did not submit any comments on the language of the proceeding.

The Center verified that the Complaint together with the translated Complaint satisfied the formal requirements of .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).

In accordance with the .UA Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2020. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was October 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2020.

The Center appointed Kateryna Oliinyk as the sole panelist in this matter on November 5, 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 .UA Rules, paragraph 7.

4. Factual Background

The Complainant is an Australian skincare brand founded in 2016, who believes in the power of science together with native Australian ingredients. The Complainant offers a meticulously selected blend of potent natural ingredients combined with the patented biotechnology to provide natural but efficacious skincare.

According to the WhoIs records, the Complainant’s domain name <cemoy.com> was registered on June 27, 2016, and the Complainant also holds the domain name <cemoy.com.au> which redirects users to the website “www.cemoy.com”.

The Complainant holds the following trademark rights:

- International Registration No. 1400778 CEMOY, registration date being January 8, 2018 and covering goods in class 3, mainly sanitary preparations being toiletries non-medicated toiletry preparations, as well as cleaning preparations for use in the home and other environments;

- International Registration No. 1544815 CEMOY, registration date being July 14, 2020, with the designation to Ukraine and covering goods in class 3, mainly sanitary preparations being toiletries non-medicated toiletry preparations, as well as cleaning preparations for use in the home and other environments;

- European Union Trade Mark (“EUTM”) 018127481 CEMOY, application filing date being September 23, 2019, registration date being January 22, 2020 and covering goods in class 3: “Cosmetics; incense; cosmetics for animals; air fragrancing preparations; facial cleansers; oils for cleaning purposes; polishing preparations; grinding preparations; ethereal oils; dentifrices.”

The Complainant’s products are sold around the world, including through the global Amazon and eBay marketplaces.

The Respondent registered the disputed domain name <cemoy.com.ua> on November 26, 2019 and it directs Internet users to a website which duplicates the original design of the Complainant’s website “www.cemoy.com”. When Internet users are navigating through different pages of the Respondent’s website, they are redirected to the Complainant’s own website.

The Respondent is the individual under the name ‘Wang Mark’, located in Hong Kong, China.

The Respondent is not affiliated with the Complainant.

Most of the Complainant’s trademark registrations predate the registration of the disputed domain name by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the CEMOY trademarks. The mere addition of the respective country-code Top-Level Domain (“ccTLD”) “.com.ua” does not constitute a sufficient element of distinctiveness which should be taken into consideration when evaluating the similarity of the CEMOY trademark with the disputed domain name.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not known by the domain name and is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its CEMOY trademark, in the disputed domain name or otherwise.

The Complainant asserts also that the registration and use of the disputed domain name is a clear-cut case of typo-squatting in part of the second level domain: “com.ua” v. “com.au”.

The Complainant further submits that the Respondent cannot assert that the use of the disputed domain name is in connection with a bona fide offering of goods and services.

The Complainant asserts that, the website at the disputed domain name is not functional (i.e., except the homepage – a copy of the Complainant’s website homepage). The Complainant also claims the website “www.cemoy.com.ua” was associated or has been created for further distribution of counterfeits as it provides evidence that there was a reference of the disputed domain name <cemoy.com.ua> on the packaging of counterfeited CEMOY products.

The disputed domain dame <cemoy.com.ua> was registered and used in bad faith as the Respondent clearly lacks rights and legitimate interests, the disputed domain name <cemoy.com.ua> is the clear illustration of the typo-squatting case as it incorporates the Complainant’s trademark in its entirety and mimics the ccTLD “.com.au”, and the website under the disputed domain name is designed for sales of counterfeits as the counterfeited CEMOY products are labeled with the reference to the website “www.cemoy.com.ua”.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the .UA Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

The first element of paragraph 4(a) of the .UA Policy requires a complainant to establish first, that it has rights in a trade mark or service mark, and secondly, that the disputed domain name is identical or confusingly similar to that trade mark or service mark.

Given the similarities between the .UA Policy and Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel will refer to the UDRP precedents when relevant. As noted in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.2.1: “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”

The Panel finds that the Complainant has rights in its CEMOY trademark, which predates the disputed domain name. It does not matter for the purposes of this element when the disputed domain name was registered – the Panel agrees with the consensus approach as explained in WIPO Overview 3.0, section 1.1.3: “1.1.3 While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.”

The applicable generic Top-Level-Domain (“gTLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The Panel finds that the same approach shall be applied in the present case for the applicable ccTLD “.com.ua”, which is a standard registration requirement for the Disputed Domain Name and shall be disregarded for the confusing similarity test (See LEGO Juris A/S v. Anton Obrezkov, WIPO Case No. DUA2020-0001).

In cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark, the Panel finds that in the present case the disputed domain name contains the Complainant’s registered CEMOY trademark in its entirety.

The Panel also finds that other contentions alleged by the Parties under the first element are not relevant for the analysis under the first element of the .UA Policy.

Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s Trademark in which the Complainant has rights, therefore, the Complainant has established its case under paragraph 4(a)(i) of the .UA Policy.

B. Rights or Legitimate Interests

While the overall burden of proof is on the complainant, previous panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see AB Electrolux v. Захаров Евгений, WIPO Case No. DUA2020-0006).

Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademark CEMOY in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the .UA Policy have been met by the Complainant.

Furthermore, the Panel notes that the Respondent totally copied the original design of the official Complainant’s website and forwards Internet users to the official website of the Complainant under the domain name <cemoy.com>. Therefore the Respondent is not using the disputed domain name in connection with any bona fide offer of goods or services in accordance with paragraph 4(c)(i) of the .UA Policy and the Respondent is not making legitimate noncommercial or fair use of the domain name in accordance with paragraph 4(c)(iii) of the .UA Policy.

The Respondent has failed to show that it has acquired any rights with respect to the disputed domain name. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.

As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the .UA Policy.

C. Registered or Used in Bad Faith

The facts that the disputed domain name is identical to the Complainant’s trademark and it resolves to a website that copies the “Look and Feel” of the Complainant’s official website, establish that the Respondent was well aware of the Complainant’s trademark when registering the disputed domain Name.

Moreover, some of the links of the website at the disputed domain name redirect to the official website of the Complainant. This confirms that the Respondent knew of the Complainant and its trademark rights.

Furthermore, the Complainant has demonstrated that the website “www.cemoy.com.ua” was associated or had been created for further distribution of counterfeited CEMOY products. The Complainant found references to the website in the Internet forum where users discussed the presence of counterfeit CEMOY goods and pointed to the website “www.cemoy.com.ua” as a possible source of fake goods.

Thus, although the website “www.cemoy.com.ua” does not currently resolves to as an e-commerce website, the Respondent may at any time change the content of the website and start selling counterfeits through the website (and there are the grounds for such assumption as counterfeited CEMOY products available on the market contain the reference to the website “www.cemoy.com.ua“ (Annex 10 of the Complaint)). Alternatively, the Internet traffic may be redirected to a website that is not that of, or associated with, the Complainant (See MySpace, Inc. v. Mari Gomez, WIPO Case No. D2007-1231) and as it may increase customer confusion that the disputed domain name is somehow licensed or controlled by the Complainant (see PayPal Inc. v. Jon Shanks, WIPO Case No. D2014-0888).

The use of the disputed domain name to redirect the traffic to the Complainant’s own website also implies bad faith as there is a high risk of implied affiliation with the Complainant.

Additionally, failure to respond to a cease and desist letter or other communications is further evidence of bad faith.

In the case at hand, in view of the absence of any documented rights or legitimate interests of the Respondent, and its failure to respond to the cease and desist letter and the Complaint, the Panel finds that the Respondent’s redirection of the disputed domain name to the Complainant’s website also amounts to bad faith.

Finally, the Panel also finds that the Respondent’s failure to take part in the present .UA proceedings constitutes further evidence of bad faith.

In view of all the above circumstances, the Complainant has therefore satisfied paragraph 4(a)(iii) of the .UA Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name <cemoy.com.ua> be transferred to the Complainant.

Kateryna Oliinyk
Sole Panelist
Date: November 19, 2020