WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
O P I Products, Inc. v. Li Wang/Wang A/Wang, Lin Yu/Yu Lin, Yuanzhen Zou/Jiang Zheng
Case No. D2012-2514
1. The Parties
The Complainant is O P I Products, Inc. of North Hollywood, California, United States of America, represented by Blakely, Sokoloff, Taylor & Zafman, LLP, United States of America (“USA”).
The Respondents are Li Wang/Wang A/Wang of Fuzhou, China; Lin Yu/Yu Lin of Guizhou/Gansu, China; Yuanzhen Zou/Jiang Zheng of Tianjin, China.
2. The Domain Names and Registrars
The disputed domain names <cheap-opi-nail.com>, <cheapopinail.com>, <cheap-opi-nail-polish.com>, <cheapopinailpolishonline.com>, <nailpolishbyopi.com>, <opinailonline.com>, <opinailpolishforsale.com>, <opinailpolishlacquer.com>, <opi-nail-polish-online.com>, <opi-nail-polish-sale.com>, <opi-nail-polish-shop.com>, <opi-nail-polish-store.com>, <opinailpolishwebsite.com>, <opi-nail-polish-wholesale.com>, <opinailsale.com>, <opinailstore.com> and <opinailwholesale.com> are registered with Chengdu West Dimension Digital Technology Co., Ltd. The disputed domain name <googleopinailpolish.com> is registered with Jiangsu Bangning Science & Technology Co. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2012. On December 21, 2012, the Center transmitted by email to Jiangsu Bangning Science & Technology Co. Ltd. and Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrars”) requests for registrar verification in connection with the disputed domain names. On December 22, 2012 and December 24, 2012, the Registrars transmitted respectively by email to the Center their verification responses confirming that the Respondents are listed as the registrant and providing their contact details. On December 27, 2012, the Center sent an email communication to the parties, in both Chinese and English, regarding the language of the proceeding. On December 28, 2012, the Complainant requested English be the language of the proceeding. The Respondents did not make any submissions with respect to the language of the proceeding by the specified due date.
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 the Respondents of the Complaint, and the proceeding commenced on January 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2013. The Respondents did not submit any Response. Accordingly, the Center notified the Respondents’ default on January 28, 2013.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 4, 2013. 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
A. Complainant
The Complainant is a company incorporated in the USA and the owner of numerous registrations worldwide for the trade mark OPI (the “Trade Mark”).
B. Respondent
The Respondents1 are individuals apparently with addresses in China.
C. The Disputed Domain Names
The disputed domain names were registered on the following dates:
<cheap-opi-nail.com> February 23, 2012
<cheap-opi-nail-polish.com> February 23, 2012
<cheapopinail.com> February 23, 2012
<cheapopinailpolishonline.com> September 11, 2011
<googleopinailpolish.com> May 17, 2011
<nailpolishbyopi.com> September 16, 2011
<opi-nail-polish-online.com> February 23, 2012
<opi-nail-polish-sale.com> February 23, 2012
<opi-nail-polish-shop.com> February 23, 2012
<opi-nail-polish-store.com> February 23, 2012
<opi-nail-polish-wholesale.com> February 23, 2012
<opinailonline.com> February 23, 2012
<opinailpolishforsale.com> September 11, 2011
<opinailpolishlacquer.com> September 17, 2011
<opinailpolishwebsite.com> September 11, 2011
<opinailsale.com> February 23, 2012
<opinailstore.com> February 23, 2012
<opinailwholesale.com> February 23, 2012
5. Parties’ Contentions
A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is a leading manufacturer and retailer of cosmetic products, in particular nail polish, nail lacquers, and other nail care preparations. The Complainant markets and sells its products under the Trade Mark worldwide. The Trade Mark was first used in 1981.
The disputed domain names are confusingly similar to the Trade Mark. They incorporate in their entirety the Trade Mark together with non-distinctive generic words. Furthermore, there has been at least one instance of consumer confusion regarding the disputed domain name <opinailpolishwebsite.com> and the website to which it has been resolved.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The disputed domain names have been linked to websites which feature the Trade Mark and which offer for sale counterfeit OPI nail polish products (the “Websites”).
The Respondent is not commonly known by the disputed domain names and is not making a bona fide commercial use of the disputed domain names.
The Complainant made the following submissions in support of its contention that the disputed domain names have been registered and used in bad faith:
(1) Genuine OPI products are only sold through exclusive authorized distributors;
(2) The Complainant’s representatives have previously purchased what were purportedly OPI nail polish products from a website linked to the disputed domain name <discountopinailpolish.com>, registered in the name of one of the Respondents to this proceeding, Yu Lin. The goods originated from an entity previously unknown to the Complainant based in Shanghai, China. Upon inspecting the products after they arrived, the labeling on the bottom of the bottles was noticeably different from that used by the Complainant and did not include the Complainant’s batch code. Furthermore, the colour names on the bottles did not correspond to the appropriate colours used by the Complainant on genuine OPI products;
(3) The Websites use the same fonts and stylizations used by the Complainant for the Trade Mark;
(4) Several of the Websites reproduce copyright images taken from the Complainant’s Australian website and also use, without authorization, the name and trade mark of the Complainant’s authorised Australian distributor;
(5) Several of the Websites also feature the trade marks of third party competitors of the Complainant, including Sally Hansen, Neutrogena, Lakme, Lotus, Mary Kay, Maybelline, Revlon, Lancome, MAC, Olay, Estee Lauder, and others;
(6) Two of the disputed domain names are being passively held and, as at the time of filing of the Complaint, were not resolved to active websites.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the registration agreements for the disputed domain names is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Websites are English language websites;
(2) It is unclear from the available information whether the Respondent is conversant in Chinese, or is merely using Chinese Registrars; and
(3) The Complainant would be unduly disadvantaged if the proceeding were conducted in Chinese.
The Respondent did not file a Response and did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) that the language of the proceeding shall be English.
6.2. Consolidation of Respondents
UDRP jurisprudence suggests consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve (Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281).
The Complainant submits that it is extremely likely the disputed domain names are subject to the common ownership or control of the same person or company, and that it would be procedurally efficient and fair to all the parties to permit consolidation in this case.
The arguments relied upon by the Complainant in support of its consolidation request include:
(1) The fact the disputed domain names are extremely similar to one another suggests common ownership;
(2) The WhoIs and registrar information for the disputed domain names is identical or highly similar. The email addresses for 17 of the 18 disputed domain names are identical, and the name servers are also identical or highly similar. The phone numbers for the disputed domain names with Yu Lin and Jiang Zheng as listed owners are identical. 17 of the 18 disputed domain names are registered with the same Registrar. The sole disputed domain name with a different registrar and listed email address shares the same registrant and administrative contact name (Yu Lin) with three of the other disputed domain names, and its website content is highly similar to the Websites to which the disputed domain names registered to Li Wang have been resolved;
(3) There are marked similarities between the Websites; and
(4) Reverse IP searches show that the Websites are hosted at IP addresses that also host similar domain names containing well-known cosmetics, clothing and footwear trade marks.
The Respondent did not file a Response and did not file any submissions with respect to consolidation of the Respondents.
In all the circumstances, the Panel concludes sufficient evidence has been adduced to enable the conclusion to be drawn that common control is being exercised over the disputed domain names.
In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Respondents is procedurally efficient and equitable to all the parties, is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in respect of this issue.
6.3. Decision
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the dates of registration of the disputed domain names by over 30 years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
Each of the disputed domain names comprises the Trade Mark in its entirety together with non-distinctive, descriptive and generic words such as “nail”, “cheap”, “nail polish”, “online”, “lacquer”, “for sale”, “shop”, “online”, “website” and “wholesale”, none of which serve to distinguish the disputed domain names from the Trade Mark in any significant way. Furthermore, the Complainant has filed evidence of an instance of consumer confusion in respect of one of the disputed domain names. Additionally, the Panel draws the conclusion that the disputed domain name <googleopinailpolish.com> contains non-distinctive and descriptive words, along with the trademark GOOGLE, which in combination serve to heighten rather than distinguish the disputed domain name from the Complainant’s mark, under the circumstances.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the disputed domain names even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by over 30 years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have been used either:
1. In respect of the Websites, which have not been authorised by the Complainant, appear to offer for sale counterfeit OPI products, and which reproduce the Trade Mark in the exact same fonts and stylisations used by the Complainant, as well as images taken from the Complainant’s websites. The Panel notes that several of the Websites at the time of filing are structured as blogs but, from the existence of links and images of the Complainant’s products, the Panel determines these Websites are commercial in nature for the apparent purposes of selling counterfeit OPI products (QNX Software Systems Limited v. Jing Rung, WIPO Case No. D2012-1597); or
2. In the case of one of the disputed domain names has been passively held (Annex 5 to the Complaint).
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Respondent has clearly engaged in a pattern of conduct of registering the disputed domain names comprising the Trade Mark, without the authorisation or approval of the Complainant, in order to profit by attracting users to the Websites. The Complainant has submitted compelling evidence to suggest that a website operated by the Respondent Yu Lin and very similar to the Websites to which the disputed domain names have been resolved offered for sale counterfeit OPI products. The Panel also notes the Websites contain the Trade Mark using the various fonts and stylisations used (and registered) by the Complainant, as well as images taken from the Complainant’s official websites. Some of the Websites also feature the name and trade mark of the Complainant’s authorised Australian distributor, and some also feature the trade marks of competitors of the Complainant.
The Panel finds that use of the disputed domain names in this manner is clear evidence of bad faith. The Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
It is trite, under UDRP jurisprudence, that passive holding of domain names can, in certain circumstances, amount to bad faith. In all the circumstances of this proceeding, and given in particular the evidence suggesting that each of the disputed domain names are subject to common control, the Panel concludes there is sufficient evidence to support a finding of bad faith in respect of the disputed domain name that, as at the time of filing of the Complaint, was being passively held.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 disputed domain names <cheap-opi-nail.com>, <cheapopinail.com>, <cheap-opi-nail-polish.com>, <cheapopinailpolishonline.com>, <nailpolishbyopi.com>, <opinailonline.com>, <opinailpolishforsale.com>, <opinailpolishlacquer.com>, <opi-nail-polish-online.com>, <opi-nail-polish-sale.com>, <opi-nail-polish-shop.com>, <opi-nail-polish-store.com>, <opinailpolishwebsite.com>, <opi-nail-polish-wholesale.com>, <opinailsale.com>, <opinailstore.com>, <opinailwholesale.com> and <googleopinailpolish.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Date: February 18, 2013
1 For ease of reference, where the context permits, the Panel shall refer to the Respondents in the singular for the remainder of this Decision.