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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Estee Lauder Cosmetics Ltd; Make-Up Art Cosmetics Inc. v Telmex Management Services

Case No. D2001-1428

 

1. The Parties

The Complainants are Estee Lauder Cosmetics Ltd of 161 Commander Blvd., Agincourt, Ontario, M1S 3K9, Canada and Make-Up Art Cosmetics Inc. of 767 Fifth Avenue, New York, NY 10153, United States of America.

The Respondent is Telmex Management Services of Pasea Estate, Road Town, Tortola, British Virgin Islands.

 

2. The Domain Name and Registrar

The Domain Name is <macosmetics.com>, and the Registrar is Tucows, Inc.

 

3. Procedural History

The Complaint was filed on December 6, 2001. WIPO verified that the Complaint satisfies 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") and that payment was properly made. The Panelist is satisfied this is the case.

The Complaint was properly notified in accordance with Paragraph 2 (a) of the Rules. The Respondent responded informally on December 10, 2001, and January 9, 2002, however no formal Response has been received.

The Administrative Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence on January 23, 2002.

No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panel’s decision was February 8, 2002.

 

4. Factual Background

The Complainants are affiliated companies engaged in the manufacture, distribution, and sale of personal products including skin care, makeup, perfume, and related products under the MAC trade mark.

The Respondent registered the domain name <macosmetics.com> with Tucows, Inc. on January 25, 2001, and is using the domain name to point to an adult escort services site. It has offered the Domain Name for sale to the Complainants for $2,000. The Respondent owns other domain names containing third party famous marks.

 

5. The Parties Contentions

A. Complainants

The Complaint maintains the following:

Complainants Have Exclusive Rights in the MAC® Mark

The Complainants sell skin care products, makeup, and perfume in many countries worldwide. For more than 15 years, companies affiliated with Complainants have continuously provided high quality cosmetic products under the MAC® trademark and trade name.

Complainants both own exclusive rights to the MAC name, design and logo, in distinct geographical areas. Estee Lauder Cosmetics Ltd. owns exclusive rights to the MAC name, design and logo in the United States and Canada and is the owner of many federally registered trademarks in the United States that consist of or include the MAC® mark, including the following registrations:

Mark

Class

Registration No.

Registration Date

M-A-C (stylized)

3, 16, 21

1,642,532

April 30, 1991

M-A-C (and design)

3

2,208,572

December 8, 1998

MAC GYM (and design)

3, 5, 18

212,034,677

February 4, 1997

MAC PRO (and design)

42

2,442,447

April 10, 2001

Make-Up Art Cosmetics Inc. owns exclusive rights to the MAC name, design and logo internationally outside the United States and Canada. Since the Complainants are affiliated companies and own all rights in the MAC name, design and logo, all necessary parties have been joined. Viacom Int’l Inc. and MTV Networks Europe v. Mahon, WIPO Case No. D2000-1440 (affiliated companies were justified in bringing joint action).

Complainants have invested and continues to invest substantial amounts of money and effort in advertising and promoting the MAC® mark and a multitude of goods and services under the MAC® mark. By virtue of Complainants’ extensive and exclusive use, advertising and promotion of the MAC® mark, this mark has achieved significant consumer recognition and fame and serves as the exclusive designation of origin of Complainants’ goods and services, and as a symbol of the goodwill and excellent quality and reputation of Complainants’ goods and services. The MAC® mark is famous and is entitled to a wide scope of protection, including protection against dilution. Virtually every cosmetic consumer is familiar with the MAC® mark.

Complainants’ uses of the MAC® mark include marketing numerous skin care, makeup, perfume, and related products through the domain name registered to joint complainant Make-Up Art Cosmetics Inc. "maccosmestics.com." The associated website, located at <www.maccosmetics.com>, is available internationally, including in the British Virgin Islands where Respondent is purportedly located.

Respondent Has Registered and Used the Infringing Domain Name Improperly

According to the WHOIS record, Respondent registered the Infringing Domain Name in January 2001. Respondent uses the Infringing Domain Name to host an active website (the "Infringing Website") offering adult-escort services.

When the Complainants learned that the Respondent had registered the Infringing Domain Name, Counsel for Complainants wrote to Respondent on October 11, 2001, notifying Respondent that its registration and use of the Infringing Domain Name infringed Complainants’ trademark rights and demanding that Respondent transfer that domain name to Complainants.

Respondent replied to counsel for Complainants on October 11, 2001, via e-mail. Respondent denied that it was infringing the MAC® mark. Respondent also asserted that <macosmetics.com> cannot be mistaken with <MACcosmetics.com.> Respondent demanded $2000 for the transfer of the Infringing Domain Name, and stated that the fee was "not negotiable."

Despite its original contention that the Infringing Domain Name could not be confused with Complainants’ domain name <maccosmetics.com>, Respondent sent an e-mail to a senior manager at the affiliated Estèe Lauder company on October 17, 2001, stating: "we regularly receive e-mail addressed incorrectly as we own the domain name <macosmetics.com>. In this email, Respondent again offered the Infringing Domain Name for sale at a price of $2000, this time directly to Complainants.

Respondent’s Infringing Domain Name Is Identical Or Confusingly Similar to The Famous MAC® Mark

The Respondent’s Infringing Domain Name – <macosmetics.com> – incorporates wholesale the famous MAC® mark. It also is virtually identical to the Complainants’ official domain name <http://maccosmetics.com> which points to the website on which Complainants promote their products, <www.maccosmetics.com>.

Respondent has (a) appropriated the MAC® mark; (b) combined the MAC® mark with the word "cosmetics," as Complainants do in their official domain name; and (c) joined the MAC® mark and the word "cosmetics" into a single word with only one "c." ICANN panels consistently have held that domain names that contain obvious misspellings or close variants of a trademark owner’s mark are identical or confusingly similar to that mark. See, e.g., AltaVista Co. v. Fairbairn, WIPO Case No. D2000-0849 (Oct. 13, 2000) ("altakista.com" infringes ALTAVISTA); Yahoo! Inc. v. Eitan Zviely, et al., WIPO Case No. D2000-0273 (June 14, 2000) ("yashoo.com" and 36 other domain names containing misspellings or close variations of YAHOO! infringe complainant’s trademark); Encyclopædia Britannica, Inc. v. Zuccarini, et al., WIPO Case No. D2000-0330 (June 7, 2000) ("brtanica.com," "bitannica," "encyclopediabrittanica.com," and "britannca.com" infringe encyclopaedia britannica); Aurora Foods, Inc. v. David Paul Jones, WIPO Case No. D2000-0274 (June 7, 2000) ("duncanhine.com" infringes DUNCAN HINES).

Besides being virtually identical to Complainants’ famous MAC® mark and official domain name, the infringing Domain Name is confusingly similar thereto. Specifically, Respondent merely builds on the famous MAC® mark and website address by adding the word "cosmetics" that is part of Complainants’ company name and which logically would refer to a cosmetic product or service offered by Complainants. Prior ICANN panels have found that the addition of a generic word or modifier to a famous trademark in a domain name does not eliminate confusion and is evidence of bad faith. See Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (panelist transferred domain name, finding that "[i]n particular, consumers looking for information regarding the ‘Microsoft Home’ or ‘Microsoft Home’ products would assume that the website address www.microsofthome.com would take them to an official Microsoft site that provides such information"); GA Modefine SA v. Armani International Investment, WIPO Case No. D2000-0305 (panelist transferred domain name "armaniinternational" to owner of ARMANI mark since "the adjunction of the trite adjective ‘international’ would not modify the attractive power of the word ‘Armani’"); Dell Computer Corp. v. Ewaldsson, WIPO Case No. D2000-1087 (domain names incorporating "Dell" with addition of generic terms were confusingly similar to mark and evidenced bad faith). Thus, the Infringing Domain Name is identical or at the very least confusingly similar to the MAC® Mark.

Further, courts have recognized that consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or marks. See, e.g., Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998) ("A customer who is unsure about a company’s domain name will often guess that the domain name is also the company’s name. . . . [A] domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base.") (citations omitted). This is all the more so when, as in the case of Complainants, the companies use the Internet to market or sell their goods and services.

Because MAC® is the trademark and "MAC Cosmetics" constitutes a company name and the <www.sportsbook.com> associated with the official MAC® skin care, makeup, perfume, and related products sales and information website, consumers would expect to find an official MAC company website at "macosmetics.com." Respondent’s registration of the Infringing Domain Name and use of that domain name in connection with an adult-escort-services website thus causes or is likely to cause consumer confusion. See, e.g., Yahoo!, WIPO Case No. D2000-0777 at § 6 (domain names comprised of misspellings of a trademark are identical or confusingly similar to the mark when those domain names are associated with competitive Internet goods and services); State Farm Automobile Ins. Co. v. Douglas LaFaive, NAF Case No. 95407 (Sept. 27, 2000) ("statefarm-claimshelp.com" nearly identical or confusingly similar to STATE FARM when used in connection with a competitive site). Furthermore, Respondent has openly admitted to Complainants that actual consumer confusion has resulted.

Respondent Has No Legitimate Interests in the Infringing Domain Name

Respondent has no connection or affiliation with Complainants. Respondent has not received any license or consent, express or implied, to use the MAC® mark in a domain name or in any other manner.

Respondent has not used the Infringing Domain Name in connection with a bona fide offering of goods or services. Respondent does not have a trademark registration for "macosmetics.com" and could not obtain one because the MAC® mark is owned by, and is registered to, Complainants. While it appears that Respondent may offer adult-escort services through the Infringing Website that is connected to the Infringing Domain Name, Respondent’s unauthorized provision of information and services under Complainants’ mark is not a bona fide offering of goods and services. State Farm Automobile Ins. Co. v. Douglas LaFaive, NAF Case No. 95407 (Sept. 27, 2000).

Respondent has not made a legitimate non-commercial or fair use of the Infringing Domain Name. Instead, Respondent is "[t]aking advantage of consumers’ known disposition to misspell domain names . . . [and] divert[ing] Internet traffic to [its] web sites . . . ." Encyclopaedia Britannica, WIPO Case No. D2000-0330 at § 3 (finding no legitimate use under those circumstances). Indeed, Respondent admitted as much in its e-mail of October 17, 2001.

Moreover, Respondent’s Infringing Website offers adult-escort services. Using the famous and highly-regarded MAC® mark in association with adult-escort services is likely to tarnish the MAC® mark. See Fairchild Publications, Inc. v. Saeid Yomtobian, WIPO Case No. D2000-1003 at § 6 (Feb. 14, 2001) (no legitimate interest in using <childrenbusiness.com>, a domain name that bears no logical relation to Respondent’s adult-sex website); Chef America, Inc. v. Sean Murray, WIPO Case No. D2000-1481 at § 6.11 (Feb. 13, 2001) (use of "hot-pockets.com" domain name resolving to a website bearing the caption "Midget Porn Outlet" tarnished or could tarnish HOT POCKETS mark and therefore Respondent had no legitimate interest in domain name); MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205 at § 6 (May 11, 2000) (use of domain name to offer sexually explicit and pornographic material is calculated to mislead consumers and tarnish complainant’s service mark); Toys "R" Us, Inc. v. Akkaoui, 40 U.S.P.Q.2d 1836 (N.D. Cal. 1996) (use of the name "adultsrus" to advertise sexual devices and clothing on the Internet diluted Toys "R" Us line of "‘R’ US" trademarks). Using a domain name to tarnish a trademark is precisely the kind of conduct that does not demonstrate a legitimate interest in a domain name. See Dispute Policy at ¶ 4(c)(iii).

There is no evidence that Respondent, whose purported corporate name differs from the Infringing Domain Name, is commonly known by the Infringing Domain Name. Indeed, the Infringing Domain Name bears no logical relation to adult-escort services offered by Respondent. Rather, the evidence suggests that Respondent registered the Infringing Domain Name with the intent of trading on the reputation of and goodwill associated with Complainants. See Marriott Int’l, Inc. v. Thomas Burstein & Miller, WIPO Case No. D2000-0610 at § 7 (Sept. 14, 2000) (no legitimate interest when there is no evidence that respondent is commonly known by the domain name). Thus, Respondent has no legitimate interests in the Infringing Domain Name.

Respondent has Registered and Used the Infringing Domain Name In Bad Faith

As Complainants’ numerous registrations attest, the MAC® mark is a famous mark. The fame and reputation of a trademark owner’s mark can demonstrate a Respondent’s bad faith intent in registering a domain name that contains the famous mark. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 at § 7 (February 18, 2000); see also eBay, Inc. v. Sunho Hong, WIPO Case No. D2000-1633 at § 6 (January 18, 2001) (actual or constructive knowledge of a complainant’s trademark rights suggests bad faith); Seek America Networks, WIPO Case No. D2000-0131 at § 6.9 (bad faith inferred from using a hyphen as a device to obtain a domain name that is to all intents identical to trademark owner’s famous mark); Viacom Int’l Inc. v. Sung Wook Choi and M Production, WIPO Case No. D2000-1114 at § 6.5 (November 20, 2000) (respondent’s admission that he knew of fame of complainant’s mark is evidence of bad faith).

Moreover, Respondent has purposely demanded an amount larger than its out-of-pocket costs for registration, namely $2000, as its price for selling the Infringing Domain Name to Complainants. Registering a domain name for the purpose of selling or transferring the domain name for excessive consideration is evidence of bad faith registration and use under Paragraph 4(b)(i) of the Dispute Policy. See also Nabisco Co. v. The Patron Group, Inc., WIPO Case No. D2000-0032 at § 5(c) (February 23, 2000) (offering to sell infringing domain names for a profit is evidence of bad faith); Cable News Network v. Manchester Trading, Forum No. FA 0093634 (February 8, 2000) (offering to sell an infringing domain name for $8,875 is evidence of bad faith); Parfums Christian Dior v. QTR Corp., WIPO Case No. D2000-0023 at § 6(c) (March 9, 2000) (public notice that "this domain name is for sale" is evidence of bad faith intent to register the domain name primarily for selling it for a valuable consideration).

Given the fame of the MAC® mark, "it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the [Infringing Domain Name]. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration." See Telstra, WIPO Case No. D2000-0003 at § 7.7.

Respondent has further evidenced bad faith by linking the Infringing Domain Name to an active website. This unauthorized use creates a likelihood of confusion with Complainants and the MAC® marks. See Xerox Corp. v. Imaging Solution, WIPO Case No. D2001-0313 at § 6(c) (April 25, 2001) (use of trademarks on website linked to Infringing Domain Names creates a likelihood of confusion).

Further, as emphasized above, the active website to which the Infringing Domain Name resolves offer adult-escort services. Numerous ICANN panels have held that registering and using a infringing domain name in connection with a website that offers adult services or material is evidence of bad faith. See, e.g., Fairchild Publications, WIPO Case No. D2000-1003 at § 6 (use of trademark in a domain name linked to an adult-sex website show bad faith registration and use); Chef America, WIPO Case No. D2000-1481 at § 6.16 (same); AltaVista Co. v. Geoffrey Fairbairn, WIPO Case No. D2000-0849 at § 6(c) (Oct. 13, 2000) (using domain name to direct users to pornographic sites is evidence of registration and use in bad faith); MatchNet, WIPO Case No. D2000-0205 at § 6 (use of domain name to offer sexually explicit and pornographic material is prima facie evidence of tarnishment and therefore bad faith).

Even if Respondent had not used the Infringing Domain Name to host an active website, however, its actions would still constitute registration and use in bad faith. Respondent must have expected that any use of the Infringing Domain Name would cause the Complainants harm. The Infringing Domain Name contains a mark that is so "obviously indicative" of the trademark owner that Respondent’s use of the domain name would "inevitably lead to confusion of some sort." AT&T v. Fred Rice, WIPO Case No. D2000-1276 at § 6 (November 25, 2000). "Nobody registers domain names for no purpose. . . . [T]he Respondent either registered them in order to sell them to the Complainant hoping that the Complainant would offer a large sum of money for them or he registered them in order to use them to connect to an internet facility." Id.; see also eBay, WIPO Case No. D2000-1633 at § 6 (use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use).

Finally, a domain name registration search has revealed that Respondent has engaged in a pattern of registering famous marks in domain names. Some or all of these appear to be connected to adult websites as well. This illicit pattern further evidences bad faith under Paragraph 4(b)(ii) of the Dispute Policy.

Accordingly, Respondent has registered and used the Infringing Domain Name in bad faith and it should be transferred to its rightful owner, MAC.

B. Respondent

The Respondent has not filed a formal response. It did, however send an e mail to WIPO denying any misuse of the Complainants’ MAC mark and maintaining the following:

<Macosmetics.com> cannot be mistaken for <MACcosmetics.com>.

The Domain Name was originally purchased for their client company Medical Allergy Cosmetics of London UK. The Respondent developed a web site for this company with regard to a cosmetic surgery service.

The Domain Name now points to a number of female related sites, the content of which is changed randomly on a weekly basis.

The Respondent has never claimed to be MAC Cosmetics.

The Domain Name is for sale at $2000 and is not negotiable.

 

6. Discussion and Findings

According to Paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy ("the Policy"), the Complainant must prove that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

A. Identical or Confusing Similarity

The Complainants have registered trade marks for their MAC mark in logo form in the US for cosmetics and related goods. They also have a significant reputation in many countries worldwide in the mark MAC for cosmetics. The Complainants’ web site is attached to the domain name <maccosmetics.com>.

The Complainants maintain that the Domain Name will be read as a misspelling, close variant or combination of "MAC" and "cosmetics". The Panelist agrees. The Domain Name incorporates the Complainants’ MAC mark and there is only one letter difference between the Domain Name and the way the Complainants use their trade mark MAC combined with the generic word "cosmetics" for the Complainants’ web site. The additional element "osmetics" does not distinguish the Domain Name from the Complainants’ trade mark, in fact it makes confusion more likely as this element is likely to be read as the generic term "cosmetics", the field in which the Complainants are well known.

Further, the fact that the Respondent has received e mail intended for the Complainants would suggest that the Domain Name is confusingly similar to the Complainant’s domain name <maccosmetics.com> in which the Complainant has built up goodwill. Accordingly, the Panelist finds that the Domain Name is confusingly similar to a trade mark in which the Complainants have rights.

B. Rights or Legitimate Interest of the Respondent

The Respondent filed an informal Response maintaining that the Domain Name was originally purchased for a client company Medical Allergy Cosmetics who it had worked for in relation to a cosmetic surgery site. There is no documentary evidence to back up this assertion. In fact, the Domain Name was still pointed to the same adult escort service at the date of the decision as indicated in the Complaint. The Domain Name bears no logical relation to content of this kind. The Panelist notes that a other domain names registered by Respondent featuring famous third party brands e.g. <discountedcartier.com> also point to the same site. The Respondent does not appear to have any rights or legitimate interest in the Domain Name.

C. Bad Faith

Paragraph 4 (b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including follows:

- the Respondent has registered or has 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 trade mark 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 (Paragraph 4 (b) (i)); and

- by using the domain name, the 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 its web site or location or of a product or service on its web site or location (Paragraph 4(b) (iv)).

The Respondent has offered to sell the Domain Name to the Complainants for $2000. Further, the Respondent appears to be engaged in the practice of registering domain names containing the trade marks of others for example <theholidayinn.com> and <ahiltonhotel.com> both of which also point to adult sites. This indicates to the Panelist that the Respondent is either in the habit of registering the famous trade marks of others in domain names to sell the domain names to the owners concerned for profit (attempting to increase the price by attaching the domain name to undesirable adult material) or the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site or other on-line location, by creating confusion as to the source, sponsorship, affiliation or endorsement of its products or services. The Panelist, therefore, finds that bad faith has been demonstrated under Paragraph 4 (b)(i) and (iv) of the Policy.

Further the grounds set out in Paragraph 4 (b) are not exhaustive. Whilst it is not necessary for the decision, the Panelist also finds that attaching a misspelled version of the Complainants’ Domain Name to content of an adult nature also constitutes registration and use in bad faith per se.

 

7. Decision

In light of the foregoing, the Panelist decides that the Domain Name is confusingly similar to the Complainants’ trade mark MAC, the Respondent has no rights or legitimate interest in respect of the Domain Name, and the Domain Name was registered and used in bad faith.

Accordingly, it is ordered that the Domain Name <macosmetics.com> be transferred to Make-Up Art Cosmetics Inc.

 


 

Dawn Osborne
Sole Panelist

Dated: February 8, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/d2001-1428.html

 

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