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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Laboratoires Expanscience v. Juan Enrique Cobos

Case No. D2006-1604

 

1. The Parties

The Complainant is Laboratoires Expanscience, Courbevoie, France, represented by Cabinet Lhermet La Bigne & Remy, France.

The Respondent is Juan Enrique Cobos, Churubusco, Mexico, represented by himself.

2. The Domain Name and Registrar

The disputed domain name <mustelamexico.com> is registered with Melbourne IT trading as Internet Names Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2006. On December 21, 2006, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On December 22, 2006, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on January 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2007. The Response was filed with the Center on January 27, 2007.

The Center appointed Ross Carson as the sole panelist in this matter on February 8, 2007. 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 has been involved in research, manufacture, distribution and sale of medical products since 1950. Complainant’s sales for the year 2005, was 189 million Euro. Complainant’s medical products are sold in 52 countries throughout the world. One of Complainant’s principal products sold since 1950, is MUSTELA skin-care lotion and skin care cream. Sales of MUSTELA products in the year 2005 amounted to76 million Euro. MUSTELA brand baby care products are one of the leading brands in brand awareness for baby care products in many countries in which they are marketed. (Annex 8 to Complaint).

Complainant is the owner of International Trademark Registration No.154904 for the trademark MUSTELA registered on July 16, 1951, in association with all types of perfumery goods and, in particular, a skin-care lotion and a skin-care cream. The registration includes over 25 designated countries. The trademark MUSTELA was first registered in France as Registration No.402200 in 1950. A portfolio of Complainant’s numerous trademark Registrations throughout the world for or including MUSTELA is shown in Annex 5 to Complaint. Mexican Trademark Registration No. 117514 for MUSTELA registered in 1994 was renewed in 2003, for ten years as shown in Annex 6 to Complaint.

A list of Complainant’s domain names for or including MUSTELA are shown in Annexes 9 and 10 to Complaint. The list of domain names includes <mustela.com>; <mustelaus.com>; <mustelausa.com> and <mustelaamerica.com>.

5. Parties’ Contentions

A. Complainant

A.1 Identical or Confusingly Similar

Complainant states that it owns in excess of 135 registered trademarks for MUSTELA (Annex 5 to Complaint) including the registered trademarks reviewed in paragraph 4 immediately above.

Complainant submits that the domain name in dispute is identical to or confusingly similar to the Complainant’s trademarks for MUSTELA.

A.2 No Rights or Legitimate Interests in respect of the Domain Name

Complainant submits that the Respondent acquired the domain name in dispute while he was an employee of a Mexican subsidiary of Complainant. Complainant submits that since Respondent acquired the domain name in dispute as an employee of Complainant therefore Respondent has no rights or legitimate interests in the domain name in dispute. Complainant submits that at least after registering the domain name in his own name, Respondent should have transferred the domain name in dispute to Complainant or its Mexican subsidiary when he left Complainant’s group.

Complainant submits that Respondent used the domain name in dispute in association with a webpage offering the domain name in dispute for sale. Annex 14 to Complaint.

A.3 Registered and Used in Bad Faith

Complainant submits that the Respondent was employed in Mexico City as the Commercial Director of LP Services, a Mexican Corporation, from January 1, 2002, until November 30, 2002. (Annex 3 and 4 to Complaint). The domain name in dispute was registered in the name of Respondent on September 11, 2002, while he was employed by LP Services. LP Services was and is a subsidiary of Complainant. (Annex 13 to Complaint).

Respondent was reimbursed by Labatorios Expanscience Mexico (previously called Labatorios Pharmascience Mexico) for the costs of registration of the domain name in dispute. (Annex 12 to Complaint). The latter company is also a subsidiary of Complainant. (Annex 13 to Complaint).

Complainant submits that the Respondent did not have the right to register the domain name in dispute incorporating Complainants registered trademark MUSTELA in his own name.

Complainant submits that when Complainant requested Respondent to transfer the domain name to Complainant voluntarily and free of charge, Respondent answered by e-mail requesting the sum of 36,000 US$ (Annex 11 to Complaint) to transfer title in the domain name in dispute to Complainant. Complainant submits that the amount requested by Respondent for transfer of the domain name is out of proportion of the cost of registration of the domain name in dispute.

Complainant states that the domain name in dispute is not associated with an active webpage. Complainant further submits that passive holding of the domain name prevents Complainant from using the domain name in dispute in which Complainant’s registered trademark MUSTELA is the distinctive element.

B. Respondent

B.1 Identical or Confusingly Similar

Respondent did not contest Complainant’s rights in the trademark MUSTELA. Respondent did not submit that the domain name <mustelamexico.com> was not confusingly similar to Complainant’s registered trademark MUSTELA.

B.2 No Rights or Legitimate Interests in respect of the Domain Name

Respondent states that he was employed with Consupharma S.A. de C.V. the exclusive distributor of Complainant in Mexico before from December 2001 to mid-July 2002. From July 16 to November 2002, Complainant paid for Respondent’s services. Respondent assisted in the organization and start up of a Mexican subsidiary of Complainant in 2002. Respondent submits that during the start up period of the Mexican subsidiary of Complainant communications between him and Complainant and potential distributors were conducted on Respondent’s personal e-mail. Respondent submits that he registered the domain name in dispute on September 11, 2002, with the knowledge of Complainant to free up his personal e-mail. (Schedule 1 to Response). Respondent paid for the domain name in dispute directly by using his personal credit card. Respondent submits that Respondent’s personal resources were used to pay some of Complainant’s expenses during the start up period in 2002. Respondent was subsequently reimbursed by Complainant for such disbursements.

Respondent states that the domain name in dispute has been used exclusively by employees of Complainant in Mexico as an in house e-mail drop for Complainant’s Mexican employees and managers to contact one another. (Schedule 3 to Response). Respondent submits that he received a monthly charge from a web hosting service for web hosting associated with the domain name in dispute. (Schedule 4 to Response). These monthly charges where paid for by Respondent using a credit card of an employee of Complainant (Attachment 12 to Complaint). Respondent submits that he has not been paid by Complainant for the administration associated with administering the web hosting services or changing the names of Complainant’s Mexican employees having access to the website associated with the domain name in dispute after his employment with Complainant terminated in 2002.

Respondent submits that he has rights in the domain name in dispute as it was registered in his name and maintained in his name for four years before Complainant’s offer to purchase the domain name in dispute in 2006.

B.3 Registered and Used in Bad Faith

Respondent submits that registration of the domain in question took place with total knowledge and acceptance by Complainant. Additionally, since the beginning, it has been used exclusively for Complainant’s purposes, always under the rules that Complainant itself set down for its use.

Respondent submits that Mr. Ramos (Manager of Finances) of the Mexican subsidiary of Complainant contacted Respondent by telephone in 2006 informing him that Complainant now wanted to take control of the <mustelamexico.com> domain name, and that “they were ready to pay”, requesting Respondent to present a proposal in writing to Complainant. Respondent forwarded an e-mail to Mr. Ramos at Complainant’s subsidiary on November 10, 2006 requesting 36,000 $U.S. for the transfer of the domain name (Annex 11 to Complaint). Mr. Ramos sent Respondent an e-mail dated December 8, 2006, confirming receipt of Respondent’s proposal and advising that the request had been forwarded to Complainant and advising Respondent and that he expected to receive the answer on Respondent’s proposal from the Complainant in France before the year end of 2006 (Schedule 2 to Response).

Respondent submits that Respondent has not acted with any deceit, bad faith, or intent to damage Complainant. On the contrary, Respondent states that it has at all times been willing to help out, whenever asked, and, also, willing to come to terms with the Complainant.

An example of the Respondent’s willingness to help out, when requested, is that all the e-mail addresses of the employees of Complainant’s Mexican subsidiary who are included in the web hosting associated with the domain name in dispute were arranged through Respondent after the Respondent left the company (Schedule 3 to Response). On several occasions Complainant contacted Respondent by telephone asking for Respondent’s help, to update the web hosting services, to update accounts and to give maintenance to the system. Had Respondent acted fraudulently and in bad faith, Complainant’s Mexican subsidiary would have not had access to Respondent’s domain name.

Respondent submits that the agreement between Complainant and Respondent is that the Complainant has 100% freedom of use of the domain, without having the property of the domain. Had the arguments of Complainant been real, they would have been able to change the password and to take all control, once the Respondent provided the password to the Complainant. The agreement manifests the good faith of both parties, and the consent of Complainant to Respondent’s property in the domain name, and, also, that Respondent has fully cooperated so that the Complainant can use it.

Respondent submits that the facts show that, it is a false accusation that the website associated with the domain name in dispute has been blocked and without use since Respondent left Complainant’s employment in 2002.

B. 4 Reverse Domain Hijacking

Respondent submits that by means of this Response, Complainant in France have been made aware of the form in which Respondent’s domain <mustelamexico.com> has served their office in Mexico, and also of the agreements that were reached locally, and respected for the past four years. Since Respondent has not received an answer to the proposal, that Complainant requested the Respondent to submit, it is in fairness that the Respondent requests, through this Response, to get an answer to the proposal, instead of this fabricated Complaint. Complainant’s answer to Respondent’s proposal should state what is offered in exchange for Respondent’s direct administration of Respondent’s domain name. Respondent wants to use this response to reiterate that the discussion point is not the name of the domain, nor of its use, but the administration of the domain, the attribution that Complainant does not have.

Respondent further submits that by the conclusions exposed at the end of each one of the interjections corresponding to the Policy, paragraph 4(a)(i), 4(a)(ii) and 4(a)(iii) and according with the Rules 15(a) and 15(e), it is clear that the Complaint has been made in bad faith, with an attempt to remove the Respondent’s rights of domain and “constitutes an abuse of the administrative process” presented by Complainant.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Pursuant to Paragraph 4(a)(i) of the Policy Complainant must establish rights in a trademark and secondly that the domain name in dispute is identical or confusingly similar to the trademark in which Complainant has rights.

Complainant has established that it is registered as the owner of the trademark MUSTELA registered in relation to lotions and creams for skin care. The trademark was first used in commerce in 1950.

The domain name in dispute is comprised of Complainant’s trademark MUSTELA in combination with the geographical descriptor Mexico. The trademark MUSTELA forms the distinctive element of the domain name in dispute. The domain name in dispute is confusingly similar to Complainant’s trademark MUSTELA.

The addition of “.com” is irrelevant. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (addition of “.com” to mark is irrelevant).

The Panel finds that Complainant has proven that the domain name in dispute is confusingly similar to the Complainant’s registered trademark.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain name.

Respondent was retained by Complainant to advise and take part in the startup of a subsidiary in Mexico, which was to distribute MUSTELA skin cream and lotions in Mexico as well as other products of Complainant’s parent company. During the latter part of 2002, when the domain name in dispute was registered Respondent was an employee of Complainant.

Respondent registered the domain name in dispute in his own name on September 11, 2002, and personally paid for the registration of the domain name. Shortly thereafter Respondent submitted his then current expenses including the expenditure for the registration fee of the domain name <mustelamexico.com> to the Complainant for reimbursement. Respondent was reimbursed for the registration fee shortly thereafter. Respondent left the employ of a Mexican subsidiary of Complainant’s parent on November 11, 2002.

The domain name in dispute has been used as an internal message center by a limited number of employees of Complainant since Respondent’s resignation. Respondent as the named registrant of the domain name in dispute assisted Complainant occasionally to add employee names to access the domain name. Respondent paid for hosting services for the domain name in dispute utilizing a credit card of an employee of Complainant.

Complainant requested transfer of the domain name in dispute to it in 2006. Respondent in an e-mail to Complainant dated November 10, 2006, advised Complainant that the domain name in dispute “is my own property since it has been registered in my own personal name.” Respondent informed Complainant that “If you are interested in purchasing the rights and free use of the domain name, you will have to deal with me directly…”. Respondent informed Complainant that the price for the assignment of rights on the domain name is 36,000 US $.” Respondent attached a file of prices of domain names in the current market and advised Complainant, “… as you can see the price is lower whereas you have used it freely during 5 years.” (annex 11 to Complaint). Respondent’s proposal to sell the domain name to Complainant was forwarded to Complainant head office in France for consideration. The only response to Respondent’s offer to sell the domain name in dispute was the commencement of this dispute.

Paragraph 4(c) of the Policy, which is not limiting, sets out circumstances which if proved individually shall demonstrate Respondents rights to and legitimate interests in the domain name. Respondent has never used the domain name in dispute in connection with a bona fide offering of goods or services. Respondent has never been commonly known by the domain name. Respondent is not making a legitimate non-commercial or fair use of the domain name. Respondent cannot use the domain name in dispute in association with skin cream or skin lotions in Mexico without infringing Complainant’s Mexican Trademark Registrations for MUSTELA.

Respondent created a webpage offering the domain name in dispute for sale on line. The webpage named Respondent as the contact. The e-mail address for the Respondent contact was Respondent’s current e-mail address (see Annex 14 to Complaint). The use of the domain name in dispute as the address of a website to offer the domain name for sale is not a use of domain name in connection with a bona fide offering of goods or services. World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001.

The onus is on Complainant to establish that Respondent has no rights or legitimate interests in the domain name in dispute.

The Panel finds that Respondent registered the domain name in dispute in his own name while in the employ of a Mexican subsidiary of Complainant’s. Respondent was aware that the distinctive element of the domain name in dispute was the Complainant’s trademark MUSTELA which has strong brand recognition in relation to creams and skin lotions for babies and mothers. Respondent was reimbursed for the cost of registration of the domain name and used Complainant’s funds to pay for web hosting for 4 years. The fact that Respondent submitted the charges associated with the registration of the domain name in dispute to Complainant as expenses for reimbursement by Complainant and the fact that Complainant reimbursed Respondent for the registration fee does not support a finding of rights or legitimate interests of Respondent in the domain name in issue. Likewise the fact that Complainant paid for the web hosting charges relating to the domain name in dispute does not establish any right or legitimate interests of Respondent in the domain name in dispute. Previous decisions have refused to recognize rights or legitimate interests where an employee registered a confusingly similar domain name while employed by the complainant trademark owner. Weekley Homes v. Wilsher Co., NAF Case No. FA95651.

The fact that Complainant did not request the transfer of the domain name earlier is not sufficient to defeat the fact Respondent registered the domain name in dispute in his own name at Complainant’s expense while employed by a Mexican subsidiary of Complainant’s.

The allegation of Respondent that it is entitled to compensation from Complainant for administration costs associated with the domain name in dispute for the period after Respondent’s employment with Complainant’s parent terminated is a matter for another forum.

The Panel finds that the Complainant has proven that the Respondent does not have any rights or legitimate interests in the domain name in dispute.

C. Registered and Used in Bad Faith

Complainant must prove under paragraph 4(a)(iii) of the Policy that: “your domain name has been registered and is being used in bad faith”.

Paragraph 4(b) of the Policy provides:

“Evidence of Registration and Use in Bad Faith.  For the purposes of Paragraph 4(a)(iii)  the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.

Respondent was an employee of Consupharma S.A. de C,V. the exclusive distributor of Complainant in Mexico prior to the registration of the domain name in dispute. Respondent as an employee of the distributor in Mexico was aware of the MUSTELA trademarks used in association with creams and skin lotions by Complainant and its related companies prior to registration of the domain name in dispute by Respondent on September 11, 2002. Respondent must have been aware of the importance of the trademark to include the trademark as the distinctive portion of the domain name in dispute.

When Respondent left the employment of Complainant on November 11, 2002, he signed a release stating that he had received all payments to which “legally or contractually I have a right”. Respondent was paid for the registration fee for the domain name in dispute by Complainant’s parent prior to signing of the release.

Respondent submits that the domain name in dispute was registered by him because his personal e-mail was blocked by e-mail relating to setting up of the new company. Further evidence of Respondent is that Complainant did not set up an account for Respondent and Respondent had to use his own credit card to make payments for which he was subsequently reimbursed by Complainant. Respondent’s difficulties in carrying out his functions in 2002, is not a satisfactory reason for registering the domain name in dispute in his own name rather than in the name of Complainant’s parent company.

However, Respondent did not use the domain name in dispute as an active website, Complainant did post a domain for sale page on the website offering the domain name in dispute for sale. Respondent posted his current e-mail address as the contact for replies. A copy of the web page dated November 20, 2006, is attached as Annex 14 to Complaint. The offer of the domain name <mustelamexico.com>, which is confusingly similar to Complainant’s trademark MUSTELA for sale on the Internet, is evidence of bad faith. See Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044.

Respondent in an e-mail to Complainant dated November 10, 2006, advised Complainant that the domain name in dispute “ is my own property since it has been registered in my own personal name.” Respondent informed Complainant that “If you are interested in purchasing the rights and free use of the domain name, you will have to deal with me directly…”. Respondent informed Complainant that “the price for the assignment of rights on the domain name is 36,000 US $.” In the Response, Respondent stated that Complainant made a proposal by telephone to purchase the domain name in dispute from Respondent. The wording of Respondent’s letter “If you are interested in purchasing the rights and free use of the domain name…” leads to the inference that Respondent is initiating the sale of the domain name to Complainant.

The Panel finds that the Complainant has established that the Respondent registered the domain name in which the distinctive element is Complainant’s trademark MUSTELA in his own name primarily for the purpose of selling the domain name registration to the Complainant for valuable consideration in excess of any documented out-of-pocket costs established by Respondent directly related to the domain name as set forth in Paragraph 4(b)(i) of the Policy. See Ruby’s Diner, Inc. v. Joseph W. Popow, WIPO Case No. D2001-0868, where a former employee acquired a confusingly similar trademark to his employer while employed by the employer and subsequently offered to sell the domain name to his former employer first for 50,000 dollars and then for 10,000 dollars.

Complainant has proven that Respondent registered and is using the domain name in dispute in bad faith under Paragraphs 4(b)(i) and 4(a)(iii) of the Policy.

Having regard to the findings immediately above the issue of reverse domain hijacking is disposed of.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <mustelamexico.com> be transferred to the Complainant.

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Ross Carson
Sole Panelist

Dated: February 22, 2007