Complainants further submitted lists and copies of titles of registration of dozens of registrations for trademarks relating to NATURA around the world in relation to cosmetic products.

The domain name <naturacosmeticos.net> was registered on July 14, 2005.

The domain name <naturaperu.net> was registered on December 17, 2004.

5. Parties’ Contentions

A. Complainants

Complainants submitted the following arguments:

A.1. Identity or confusing similarity

The word mark NATURA (Reg. No. 817.230.890) was acknowledged by the Brazilian Patent and Trademark Office as Highly Renowned.

On March 5, 2007, the Complainants sent a cease and desist letter to the Respondent. Complainants did not receive a response.

Both of the disputed domain names are a reproduction of the main distinctive element of Complainants’ trademarks. In addition, <naturacosmeticos.net> incorporates the term “Cosmйticos”, which represents the indication of Complainants’ main business activity, which has been a cause of confusion among the public.

A.2. Respondent’s lack of rights or legitimate interests in respect of the domain name

Respondent’s websites are search sites, having even a channel for the sales of cosmetic products where Complainants’ competitors can advertise their cosmetic products.

Complainants did not execute any agreement authorizing the use of the trademark NATURA by Respondent.

A.3 Bad faith registration and use

The websites to which the disputed domain names resolve, contain insertions in Portuguese and are being displayed in Brazil.

Respondent’s conduct is parasitic and constitutes bad faith. Respondent is performing acts of unfair competition, and ignoring the notoriety and fame of the trademark NATURA.

Respondent intends to lead the consuming public into error, doubt or confusion, leading them to believe that the products advertised on Respondent’s websites are somehow related to the articles manufactured by Complainants.

B. Respondent

Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), Complainants must prove that:

(i) the domain names in question are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and

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

(iii) the domain names have been registered and is being used in bad faith.

In the administrative proceeding, Complainants must prove that each three of these elements are present.

As Respondent has failed to submit a Response to the Complaint, the Panel may choose to accept as true all of the allegations supported and reasonable of the Complaint (Encyclopedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

A. Identical or Confusingly Similar

Respondent’s domain names entirely incorporate Complainants’ trademark NATURA. This type of conduct has been found by previous panels to render domain names confusingly similar to complainant’s marks. See, for example, AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253.

The addition of a generic term like “Cosmйticos” to the first disputed domain name does not eliminate the confusing similarity between <naturacosmeticos.net> and Complainants’ trademark NATURA. See, for example, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888. Likewise, the addition of a geographic term like Perъ to the second disputed domain name does not eliminate the confusing similarity between <naturaperu.net> and Complainants’ trademark NATURA. See, Mutatis, Mutandis, Dell Computer Corporation .v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363; America Online, Inc .v. Asia On-Line This Domain for Sale, NAF Case No. FA094636; Bloomberg L.P. v. Sein M.D., NAF Case No. FA096487, Princess International Sales y Service Limited and Princess Yachts International PLC v. Lambert and Turner/Lambert Turner Marine, WIPO Case No. D2002-0419; and America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713.

With respect to Complainants’ trademarks that incorporate a design, said design is irrelevant in the domain name realm, and thus the disputed domain names are confusingly similar to said trademarks. Citing EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036, and applying it to the present case: “Only the graphic elements of such trademark [sic] which anyway cannot be reproduced in a domain name, were left out.”

To carry into effect the similarity analysis, a panel must not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No.D2000-0300; J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035; see also Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; and Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409).

Therefore, the first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

The following are examples of circumstances where a respondent may have rights or legitimate interests in a contested domain name:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 Policy, paragraph 4(c))

According to the Complainants’ arguments, which have not been rebutted by the Respondent, said Respondent is not making a bona fide offering of goods or services, because Respondent’s sites feature, according to Complainants’ unchallenged affirmations, products from Complainants’ competitors. The fact that Respondent chose <naturacosmeticos.net>, when Complainants are in the business of manufacturing and commercializing cosmetic products, reinforces the concept that Respondent’s use of this domain name is not a good faith use under paragraph 4(c)(i) of the Policy, nor Respondent’s choice a coincidence. Since said domain name is bundled up with <naturaperu.net> by virtue of having been registered by the same Respondent who obtained <naturacosmeticos.net>, and considering that said domain name also entirely incorporates the trademark NATURA, it is possible to conclude that the use of this domain name does not create rights or legitimate interests on the side of Respondent.

The record does not suggest nor has Respondent proved that it has been commonly known as <naturacosmeticos.net> and/or <naturaperu.net>.

Complainants argue that Respondent is trying to divert Complainants’ consumers to Respondent’s site, with intent for commercial gain. This affirmation is supported by the content of the website and has not been contested by Respondent.

The evidence on record does not show the existence of legitimate interests or rights on the side of Respondent.

The second element of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use 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 that 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.”

Complainants raise an unfair competition argument, which focuses on their accusation of Respondent’s intent to mislead the consuming public, by leading them to believe that the products featured on Respondent’s site are somehow related to the articles made and sold by the Complainants, causing an incorrect association in the minds of consumers. This allegation has not been challenged. It seems that Respondent’s election of domain names seems to be, under this argument, not a mere coincidence (see section 6 B. supra). Respondent is the holder of two domain names that entirely incorporate the mark NATURA. One of those domains also incorporate the term “Cosmйticos”. Cosmetics are precisely one of the main lines of products sold by the Complainants, and covered by Complainants’ trademark registrations. Attracting Internet users to the sites to which the contested domain names resolve, by trying to mislead said users through the use of domain names that fully incorporate registered trademarks (trademark NATURA having been declared highly distinctive by a local trademark authority) and featuring products that compete with the NATURA products in said websites falls within the scope of paragraph 4(b)(iv).

Therefore, the third element of the Policy has been fulfilled.

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 names <naturacosmeticos.net> and <naturaperu.net> be transferred to the Complainants.

Kiyoshi I. Tsuru
Sole Panelist

Dated: November 14, 2007

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1165.html

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