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Roux Laboratories, Inc. d/b/a Colomer USA v. Web Domain Names [2005] GENDND 1603 (26 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Roux Laboratories, Inc. d/b/a Colomer USA v. Web Domain Names

Case No. D2005-0802

1. The Parties

The Complainant is Roux Laboratories, Inc. d/b/a Colomer USA, Jacksonville, FL, United States of America, represented by Holland & Knight, LLP, United States of America.

The Respondent is Web Domain Names, Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <cremeofnature.com>is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2005. On July 29, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On July 29, 2005, Moniker Online Services, LLC 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, billing, 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 August 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2005.

The Center appointed Gabriela Paiva Hantke as the sole panelist in this matter on September 12, 2005. 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 is company that manufactures and distributes hair products to beauty salons and consumers under trademark CREME OF NATURE. The Complainant is based in Jacksonville, Florida, United States of America.

The Respondent is Web Domain Names, Shanghai, China.

The Respondent did not file any response or document in this matter.

The Complainant owns trademark registrations for the trademark CREME OF NATURE in the United States, Principal Register under the number 1002462 and 1236958. The Complainant also owns trademark registrations in other countries of the world such as Antigua and Barbuda, Australia, Bahamas, Barbados, Benelux, Bermuda, Bolivia, Botswana, Burundi, Canada, Congo, Dominican Republic, France, Ghana, Jamaica, Kenya, Liberia, Netherlands Antilles, Nigeria, Papua New Guinea, Puerto Rico, Rwanda, Sierra Leone, South Africa, Suriname, Tanzania, Uganda, Venezuela and Zanzibar according to annex E of the filed Complaint.

In addition to such registration, the Complainant has used its registered trademark, CREME OF NATURE since the year 1973, which is for more than 30 years.

On April 21, 2005, the Complainant sent a cease and desist letter to the Respondent which was returned as undeliverable, Similarly, the fax number provided in the Whois did not function and did not seem to be connected to any fax machine (Annex G).

5. Parties’ Contentions

A. Complainant

The Complainant has shown its rights over the expression CREME OF NATURE through its trademark registrations not only in the United States but also in several countries of the world and the use of its trademark in commerce.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to make a decision regarding the future of the disputed domain name <cremeofnature.com> in accordance with the Rules, it is necessary to consider all of the facts and evidence found in the Complaint, as well as the fact that the Respondent did not file any response .

A. Identical or Confusingly Similar

It is evident that the disputed domain name <cremeofnature.com> is identical to the Complainant’s trademark CREME OF NATURE, which has been used to market products for more than 30 years and in which the Complainant owns trademark rights not only in the United States of America but in several other countries of the world.

Moreover, after long and successful use, advertising and promotion of the trademark CREME OF NATURE by the Complainant, this trademark has acquired a significant degree of marketplace strength. Even though more relevant under the third element of the UDRP, it can be noted that consumers are being made to believe that goods and services offered at “www.cremeofnature.com” belong to the Complainant or are related to the goods and services offered by the Complainant. Consumers will assume that the Complainant is the owner and the one running such website and offering such goods and services. Further, as the website linked to the disputed domain name is linked to websites offering goods competing with those offered by the Complainant under the trademark CREME OF NATURE, it is obvious that the Respondent is aware that consumers will expect to find the Complainant goods when accessing the “www.cremeofnature.com” website. The Respondent is taking advantage of the fact that Internet users are being misled by the website linked to the disputed domain name.

In conclusion, the disputed domain name <cremeofnature.com> is identical to the Complainant’s registered trademark CREME OF NATURE.

B. Rights or Legitimate Interests

The Respondent, having been granted the opportunity within this administrative proceeding to reply to the Complaint, did not file any material or statement evidencing any rights or legitimate interests in the disputed domain name.

The Complainant states that it has not granted any license or permission to the Respondent in connection with the domain name <cremeofnature.com>, and that to the best of its knowledge the Respondent has not made any bona fide offering of goods and services, and that the Respondent has no rights to a trademark CRÈME OF NATURE in any country.

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not provided any evidence to rebut this prima facie showing. Therefore, the Respondent is found to have no rights or legitimate interests in respect of the domain name <cremeofnature.com>.

C. Registered and Used in Bad Faith

According to print-outs of pages from the websites linked to the disputed domain name (copies of which were attached to the Complaint in Annex F), traffic is diverted from “www.cremeofnature.com” to third parties’ websites on which competing products such as Redken and Robert Craig are marketed. It appears that the Respondent charges third party website owners an advertising fee to be listed on the Respondent’s website.

In view of the long activity and commercial efforts of the Complainant to market and distribute beauty products under the trademark CREME OF NATURE, it is not credible that the Respondent was unaware of the Complainant’s trademark, and the type of goods sold under that trademark, when it registered the disputed domain name. In support of this finding, it has been established that the Respondent not only registered a domain name identical to the Complainant’s trademark but it also linked the “www.cremeofnature.com” website to the websites of companies selling similar products to those of the Complainant. These two facts illustrate the improbability that the Respondent was unaware of the existence of the CREME OF NATURE trademark and products. Indeed, these facts show that the domain name was registered and used in bad faith. The Panel has also considered as an additional fact showing bad faith that the Respondent has been a party to previous WIPO UDRP proceedings resulting from its attempts to misappropriate other famous trademarks.

In conclusion, the Respondent is found to have registered and used the domain name in bad faith.

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 <cremeofnature.com> be transferred to the Complainant.

Gabriela Paiva Hantke
Sole Panelist

Dated: September 26, 2005