WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Emeis Cosmetics Pty. Ltd. v. Mau Lio
Case No. D2020-0561
1. The Parties
The Complainant is Emeis Cosmetics Pty. Ltd., Australia, represented by Simone Intellectual Property Services Asia Limited, China.
The Respondent is Mau Lio, China.
2. The Domain Name and Registrar
The disputed domain name <aesopfoundation.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2020. On March 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2020, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2020.
The Center appointed William R. Towns as the sole panelist in this matter on April 28, 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 Rules, paragraph 7.
4. Factual Background
The Complainant, established in 1987 and headquartered in Melbourne, Australia, provides skin, hair and body care products under its AESOP brand. The Complainant represents that its products are sold at over 235 retail stores and select department stores in over 20 countries around the world, and through third party distributors and online sales platforms. This includes the Complainant’s flagship store on the Chinese retail platform Tmall Global: “www.aesopskincare.tmall.hk”. The Complainant also has established the Aesop Foundation to provide individuals in Australia with opportunities through the development of literacy and storytelling.
The Complainant is the owner of an Australian trademark registration for AESOP, trade mark no. 638665, registered on October 12, 1995 and with an effective priority date of August 24, 1994. The Complainant also owns an Australian trademark for AESOP FOUNDATION, trade mark no.1842083, registered on November 29, 2017 and with an effective priority date of May 3, 2017. In addition, the Complainant holds an International trademark registration for AESOP FOUNDATION, no. 1481924, registered on June 18, 2019.
The Respondent registered the disputed domain name <aesopfoundation.com> on July 17, 2019, according to the Registrar’s WhoIs records. The disputed domain name resolves to a parked page provided by the Registrar with the legend “aesopfoundation.com is coming soon.” The Respondent is not a stranger to the UDRP, having previously been named as a respondent in several proceedings under the Policy. See, e.g., Otsuka Pharmaceutical Co., Ltd. v. Mau Lio, WIPO Case No. D2018-0687 (<cydenitor.com>) (transfer); Pfizer Inc. v. Mau Lio, WIPO Case No. D2017-0242 (<pfizerencompass.com>) (transfer). The Respondent is the holder of a large portfolio of what is said to be more than 1,500 domain name registrations, based on a reverse engineering report commissioned by the Complainant and submitted as an annex.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name <aesopfoundation.com> is identical and confusingly similar to the Complainant’s AESOP FOUNDATION mark, differing only by the omission of a space between “aesop” and “foundation”.
The Complainant maintains that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been authorized or licensed to use the Complainant’s AESOP FOUNDATION and AESOP marks (collectively the “Complainant’s marks”). The Respondent explains that the disputed domain name resolves to a parked page provided by the Registrar, which represents that a website “is coming soon.” The Complainant maintains there is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by the disputed domain name.
The Complainant further submits the Respondent is not making a legitimate or other noncommercial fair use of the disputed domain name. The Complainant asserts that the disputed domain name is basically identical to the AESOP FOUNDATION mark and carries a high risk of implied affiliation with the Complainant. According to the Complainant, this is a case of cybersquatting in which the Respondent intends to profit from registering a domain name appropriating the Complainant’s marks. The Complainant maintains the Respondent is a recidivist cybersquatter, citing three prior UDRP decisions in which the Respondent registered domain names identical or confusingly similar to each of the complainants’ respective marks, and parking the domain names with websites displaying identical “coming soon” messages.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent would have been fully aware of the Complainant’s trademark rights when registering the disputed domain name. The Complainant reiterates that its AESOP brand is known globally and in China, and cites UDRP panel decisions holding that the mere registration of a domain name identical or confusingly similar to a famous or widely-known trademark may create a presumption of bad faith. The Complainant emphasizes that the disputed domain name was registered more than 27 years following the Complainant’s registration of its AESOP mark, and some two years after the Complainant’s registration of the AESOP FOUNDATION mark.
The Complainant reiterates that the Respondent is a recidivist cybersquatter, and maintains that the only plausible explanation for the Respondent’s registration of the disputed domain name was to sell it. The Complainant submits the Respondent’s bad faith is demonstrated by the Respondent’s registration of the disputed domain name appropriating the Complainant’s marks, the Respondent’s lack of rights or legitimate interests in the disputed domain name, and the Respondent’s history of stockpiling domain names. The Complainant observes that a number of domain names registered by the Respondent consist of well-known third party trademarks such as JIM BEAM and INSTAGRAM.
The Complainant submits that the Respondent’s apparent passive holding of the disputed domain name does not preclude a finding of bad faith registration and use in the context of this case, citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Complainant maintains that the exact replication of the Complainant’s famous AESOP mark, and the implausibility that the disputed domain name could be put to any good faith use are indicative of the Respondent’s bad faith cybersquatting.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of the abusive registration of domain name, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id., at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <aesopfoundation.com> is confusingly similar to the Complainant’s AESOP mark and identical to the Complainant’s AESOP FOUNDATION mark, in which the Complainant has established rights. In considering this issue, the first element of the Policy serves essentially as a standing requirement. 1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
In this case, the Complainant’s AESOP and AESOP FOUNDATION marks are clearly recognizable in the disputed domain name. 2 When the relevant trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy. 3 The absence of a space between “aesop” and “foundation” in the disputed domain name does not preclude a finding of confusing similarity.
Generic Top-Level Domains (“gTLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD. 4
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s marks. The Respondent notwithstanding registered the disputed domain name, appropriating both the Complainant’s AESOP and AESOP FOUNDATION marks. As noted earlier, the disputed domain name resolves to a parked page provided by the Registrar with the legend “aesopfoundation.com is coming soon.” The Respondent at present appears to be passively holding the disputed domain name.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel considers that the Respondent in all likelihood was aware of the Complainant and the Complainant’s marks when registering the disputed domain name. Having regard to all of the relevant circumstances, and absent any explanation from the Respondent, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s marks, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain name in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent in all likelihood was aware of the Complainant and had the Complainant’s AESOP and AESOP FOUNDATION marks in mind when registering the disputed domain name. The record is convincing that the Respondent registered the disputed domain name in all likelihood with the intention to exploit and profit from the Complainant’s marks.
The Respondent’s passive holding or non-use of the disputed domain name does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. See also Red Bull GmbH v. Kevin Franke, WIPO Case No. D2012-1531.
The Panel considers the following circumstances to be indicative of the Respondent’s bad faith under Telstra Corporation Limited v. Nuclear Marshmallows, supra. The Complainant’s AESOP mark is distinctive and well known in relation to the products offered under the brand. As previously noted, the Respondent in all likelihood was aware of the Complainant and the Complainant’s AESOP and AESOP FOUNDATION marks when registering the disputed domain name. In light of the attendant circumstances, the Panel cannot conceive of any plausible good faith use of the disputed domain name that could be made by the Respondent.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 name <aesopfoundation.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: May 12, 2020
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
2 See WIPO Overview 3.0, section 1.8 and cases cited therein.
3 Id.
4 See WIPO Overview 3.0, sections 1.11.