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Jafra Cosmetics, S.A. de C.V. v. Unasi Inc. [2005] GENDND 1766 (24 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jafra Cosmetics, S.A. de C.V. v. Unasi Inc.

Case No. D2005-0926

1. The Parties

The Complainant is Jafra Cosmetics, S.A. de C.V., Colonia Tlacopac, Mexico, represented by Seyfarth Shaw, United States of America.

The Respondent is Unasi Inc., of Panama.

2. The Domain Names and Registrar

The disputed domain names <jafracosmetic.com> and <myjafrabiz.com> are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2005. On August 31, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On September 1, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com 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 September 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2005.

The Center appointed Felipe Claro as the sole panelist in this matter on October 10, 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

For well over 40 years, Complainant, its predecessors-in-interest, and its United States licensee, Jafra Cosmetics International, Inc. (“Jafra Cosmetics”), have continuously used the trademark “JAFRA” in the United States of America in connection with a wide variety of cosmetics, toiletries, and other personal care products that are sold directly to consumers through consultants. The “JAFRA” trademark is formed by the first several letters of the first names of Jan and Frank Day, the two founders of the Jafra business in the United States. Complainant’s United States licensee Jafra Cosmetics currently distributes “JAFRA” products in the United States through a consultant force of approximately 68,000 persons that annually achieves sales of “JAFRA” products in excess of $96,000,000.

By assignment from Jafra Cosmetics recorded in the United States Patent and Trademark Office on January 28, 2000, under Reel/Frame No. 2079/0522, Complainant owns United States Trademark Reg. No. 677,471 for the mark “JAFRA” for facial creams, eye cream and eye shadow, foot, after shave, body and facial lotions, cologne, perfume, personal deodorants, powder bases, face powder, rouge, lipstick, hair dressing, shampoo, and hair rinse, and United States Trademark Reg. No. 2,351,448 for the mark “JAFRA” for cosmetics, namely, foundation, concealer, eye and lip pencils and liners, mascara, cosmetic compacts and lip gloss, body and shower gels and washes, body scrubs, body oils, bath oils, body mists and splashes, skin fresheners, namely, toners, body powder, eau de toilette, skin cleansing creams, lotions, gels, and masks, hand creams, day and night creams, shaving creams, makeup removers, nail care preparations, namely, cuticle cream, nail polish, base coat and top coat, and nail polish remover, sunblock, sun screen and self-tanning lotion, hair sprays and spritzers. The registration was issued in 1959.

Complainant and its United States licensee Jafra Cosmetics have used the “JAFRA” mark on the Internet for many years, at a site accessible through the domain name <jafra.com>. By accessing the “www.jafra.com” website, persons interested in purchasing “JAFRA” products can learn about the Jafra companies and their products, locate a consultant in their area, and link to the consultant’s website to order “JAFRA” products.

5. Parties’ Contentions

A. Complainant

Respondent, under variants of its name “Unasi,” has been involved in at least nine UDRP procedures regarding more than forty domain names. All these procedures ended with the transfer of the disputed domain names to complainants.” Gianfranco Ferré S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622 (August 10, 2005); State Farm Mutual Automobile Insurance Co v. Unasi Management, Inc., Case No. FA0505000472028 (NAF June 15, 2005); Morgan Stanley v. Unasi Management Inc., Case No. FA0505000471488 (NAF June 20, 2005); Dermalogica, Inc. and The International Dermal Institute, Inc. v. Unasi, Inc., Case No. FA0505000485936 (NAF July 6, 2005); Save the Children Foundation, Inc. v. Unasi, Inc., Case No. FA0507000510017 (NAF August 19, 2005); Deutsche Telekom AG v. Unasi Management, Inc., WIPO Case No. D2005-0423 (June 16, 2005); Members Equity PTY Ltd. v. Unasi Management Inc., WIPO Case No. D2005-0383 (June 17, 2005); Red Bull GmbH v. Unasi Management Inc., WIPO Case No. D2005-0304 (June 9, 2005); La Caixa d’Etalvis I Pensions de Barcelona v. Unasi Inc., WIPO Case No. D2005-0567 (August 5, 2005). Respondent’s conduct with respect to the disputed domain names involved in this proceeding is essentially identical to its conduct in these other cases.

Respondent registered the <jafracosmetic.com> domain name on June 5, 2005, and the <myjafrabiz.com> domain name on June 23, 2005, long after Complainant’s “JAFRA” marks had been registered in the United States, and long after extensive sales of “JAFRA” products by or under authority of Complainant and its predecessors-in-interest had been achieved in the United States. Respondent uses the disputed <jafracosmetic.com> and <myjafrabiz.com> domain names to “redirect Internet users to its search engine website featuring links to products in direct competition with Complainant’s business.” The web pages are in the English language and appear to focus primarily, if not exclusively, upon American consumers and companies. Upon information and belief, Respondent receives compensation, in the form of click-through or referral fees, for diverting Internet users through Respondent’s websites to the competitive third-party websites.

When Respondent registered the disputed domain names, it was on constructive notice of Complainant’s rights in the “JAFRA” mark in the United States by virtue of the federal registrations of the “JAFRA” mark. Moreover, because the “JAFRA” mark is a coined, unusual, and well-known mark in the United States, because the websites to which the disputed domain names resolve provide links to third-party websites selling products that are directly competitive to those of Complainant, and because the disputed domain name <jafracosmetic.com> incorporates a deliberate misspelling of “cosmetics,” the descriptive term for the business of Complainant and its licensee Jafra Cosmetics, Respondent also had actual notice of Complainant’s “JAFRA” mark when Respondent registered the disputed domain names, and its registration and use of the disputed domain names were based upon its intent to trade upon the goodwill in Complainant’s mark in the United States.

B. Respondent

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

6. Discussion and Findings

In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainants’ undisputed representations. In that regard and apart from judging this proceeding through mere default of the Respondent, the Panel makes the following specific findings.

A. Identical or Confusingly Similar

Complainant owns registrations of the mark “JAFRA” in the United States of America for a wide variety of cosmetics and other products, and Complainant and its exclusive United States licensee have made extensive use of the “JAFRA” mark in the United States.

Complainant’s “JAFRA” mark and the disputed domain names <jafracosmetic.com> and <myjafrabiz.com> are confusingly similar within the meaning of paragraph 4(a)(i) of the Policy. The disputed domain name <jafracosmetic.com> contains three elements: (1) Complainant’s fanciful “JAFRA” mark, in its entirety; (2) the generic term “cosmetic;” and (3) the top level domain “.com.” The disputed domain name “myjafrabiz.com” contains four elements: (1) Complainant’s fanciful “JAFRA” mark, in its entirety; (2) the possessive pronoun “my;” (3) the particle “biz” (a recognized shorthand for “business” in the English language and in the TLD “.biz”); and (4) the top level domain “.com.” The presence of the top level domain “.com” in the disputed domain names is irrelevant because “.com” has no trademark significance. See, e.g., VAT Holdings v. Vat.com, WIPO Case No. D2000-0607 (August 22, 2000).

In the <jafracosmetic.com> domain name, the addition of the generic term “cosmetic” to Complainant’s fanciful mark “JAFRA” does not differentiate the domain name from the “JAFRA” mark. “Prior Panel decisions have made it clear that the addition of geographic designations, generic or descriptive terms, or words designating goods or services with which the mark is used, do not alter the fact that the domain names are confusingly similar to the marks.” Time Warner Entertainment L.P. v. HarperStephens, WIPO Case No. D2000-1254, (December 13, 2000) (finding that dozens of domain names containing the complainant’s “HARRY POTTER” mark coupled with terms such as “movies,” “music,” and “store” were all confusingly similar to “HARRY POTTER” mark). Brambles Industries. Ltd. v. Geelong Car Company Pty.Ltd., WIPO Case No. D2000-1153, (October 17, 2000) (domain name “bramblesequipment.com” confusingly similar to complainant’s “BRAMBLES” mark because “the differentiating word ‘equipment’ is descriptive only and the combination of the two words ‘brambles’ and ‘equipment’ in the domain name implies that there is an association with the Complainant’s business”); The disputed domain name “jafracosmetic.com” would appear to be a name through which Internet users can locate products sold by or under the authority of Complainant and its licensee Jafra Cosmetics. The disputed domain name <jafracosmetic.com> is confusingly similar to Complainant’s registered “JAFRA” mark.

In the <myjafrabiz.com> domain name, the addition of the terms “my” and “biz” to Complainant’s fanciful “JAFRA” mark similarly does not differentiate the domain name from Complainant’s mark. As noted above, the addition in a domain name of a generic term like “business” or its short-form “biz” to a trademark does not make confusion unlikely between the domain name and the mark.

Similarly, numerous prior decisions under the Policy have held that the addition of the possessive pronoun “my” to a mark in a domain name does not serve to differentiate the domain name from the mark and, in fact, increases the confusing similarity of the domain name. See, e.g., Nokia Corporation v. LiquidSMS Ltd., WIPO Case No. D2002-0292 (June 12, 2002) (“mynokiastuff.com” found to be confusing similar to “NOKIA” mark because “the words ‘my’ and ‘stuff’ are geared to the word ‘Nokia’ which is the principal expression in the domain name”); Sony Kabushiki Kaisha a/t/a Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007 (November 16, 2000) (<mysony.com> found to be confusingly similar to “SONY” mark because “the letters ‘my’, to an English language reader, introduce the concept of possessiveness. That which is possessed is the following letters, namely ‘Sony,’ which is the Complainant’s trademark. The addition of the letters ‘my’ has the effect of focusing the reader’s attention on the Complainant’s trademark.”).

The disputed domain name <myjafrabiz.com> appears simply to be a familiar or personalized domain name owned by Complainant through which Internet users can reach Complainant, particularly if they are interested in becoming part of the network of Jafra consultants and thus founding their own personal business in “JAFRA” cosmetics. The disputed domain name <myjafrabiz.com> is confusingly similar to Complainant’s registered “JAFRA” mark and the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires Complainant to show that Respondent has no rights or legitimate interests in respect of the disputed domain names. Complainant has never licensed or authorized Respondent to use the “JAFRA” mark, and Respondent has not claimed that it has any rights or legitimate interests in the disputed domain names.

The Panel finds that none of the defenses set forth in paragraph 4(c) of the Policy are available to Respondent. Given the fanciful nature of the “JAFRA” mark and its registration and use in the United States long prior to Respondent’s registration and use of the disputed domain names, it would seem unlikely that Respondent could show that use of the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to 4(c) of the Policy is present. Respondent’s registration and use of <jafracosmetic.com> and <myjafrabiz.com> to divert visitors to third-party websites of Complainant’s competitors is the type of conduct that has been found by prior panels to show that Respondent had no rights or legitimate interests in the subject domain names. See Morgan Stanley, supra (“the Panel finds that Respondent is using a domain name that is confusingly similar to Complainant’s registered MORGAN STANLEY mark to attract Internet users searching for Complainant’s financial products and services to Respondent’s website, where Respondent earns click-through fees for linking these diverted users to third-party websites. It is a well-established precedent under the Policy that this type of diversionary use, presumably for the purposes of benefiting from click-through compensation, is not a use in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) The Panel infers that Respondent earns click-through fees for diverting Internet users to these competing websites. Red Bull GmbH v. Bayer Shipping & Trading Ltd., WIPO Case No. D2003-0271 (WIPO June 3, 2003) linking to competitive third-party websites “shows that Respondent is well aware of Complainant as well as of its products and activities, and, instead of making a bona fide use of the domain name, rather intends to have a free ride on the fame and good will of Complainant and its trademarks”.

Because “JAFRA” is a coined term and, to Complainant’s knowledge, is not a recognized first name or surname in the United States or any foreign country, there is also no evidence that Respondent has ever been known by either the domain name or a name corresponding to the domain name pursuant to paragraph 4(c)(ii) of the Policy.

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that bad faith registration and use of a domain name can be shown by a variety of means, including by evidence that “(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website … by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website ... or of a product or service on its website…” Respondent’s use of the <jafracosmetic.com> and <myjafrabiz.com> domain names to divert Internet users to third-party websites of Complainant’s competitors is the sort of conduct that has been found by prior panels to constitute bad faith use and registration of domain names, pursuant to Policy paragraph 4(b)(iv). See Gianfranco Ferré, supra; Deutsche Telekom, supra; State Farm, supra (“because Respondent’s domain names are confusingly similar to Complainant’s mark, consumers accessing the disputed domain names may become confused as to Complainant’s affiliation with the resulting websites. Thus, Respondent’s commercial use of the disputed domain names constitutes bad faith registration and use pursuant to Policy paragraph 4(b)(iv)”); Morgan Stanley, supra “Respondent’s attempts to divert Internet users for commercial gain by attracting them to Respondent’s website through a likelihood of confusion with Complainant’s mark is evidence of bad faith registration and use pursuant to Policy paragraph 4(b)(iv)”.

Bad faith use and registration of a domain name can also be shown under paragraph 4(b)(ii) of the Policy by proof that the registrant has “registered the domain name in order to prevent the owner of the trademark . . . from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct.” At least two prior panels have found the Respondent to be in violation of paragraph 4(b)(ii) of the Policy on the basis of its use of domain names confusingly similar to third parties’ trademarks to divert Internet users. See Gianfranco Ferré, supra Respondent’s involvement in numerous other proceedings involving multiple domain names made it “clear that the Respondent’s registration and use of the disputed domain name are part of a pattern of conduct. This kind of behavior leads to the fact that the registration by Respondent constitutes a bad faith registration and use pursuant to paragraph 4(b)(ii) of the Policy”; Members Equity, supra “the evidence furnished, including that pertaining to the fact that the Respondent appears to be a prolific registrant of domain names, tends to support a finding that the registrations were ‘for the purpose of preventing the owner of the trademark from reflecting the mark in a corresponding domain name’ and that the Respondent has ‘engaged in a pattern of such conduct’”.

Accordingly, the third element of the Policy has been met.

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 <jafracosmetic.com> and <myjafrabiz.com> be transferred to the Complainant.

Felipe Claro
Sole Panelist

Date: October 24, 2005