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Jafra Cosmetics, S.A. de C.V. and Jafra Cosmetics International,S.A. de C.V. [2005] GENDND 753 (30 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jafra Cosmetics, S.A. de C.V. and Jafra Cosmetics International, S.A. de C.V.

v. ActiveVector

Case No. D2005–0250

1. The Parties

The Complainants are Jafra Cosmetics, S.A. de C.V. (Jafra) and Jafra Cosmetics International, S.A. de C.V. (Jafra International), Colonia Tlacopac, Mexico City, Mexico, represented by Seyfarth Shaw, Los Angeles, California, United States of America.

The Respondent is ActiveVector, Magdalena Mixiuhca (sic), Mexico City, Mexico.

2. The Domain Names and Registrar

The disputed domain name <jafraproducts.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2005. On March 9, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 9, 2005, eNom transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain name would remain under Registrar Lock throughout the proceeding. In addition to eNom’s partial response, the Center made a WHOIS printout, which showed that the disputed domain name was registered with eNom, and that Respondent, ActiveVector, was the current registrant of the disputed domain name. 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 March 14, 2005. In conformity with the Rules, paragraph 5(a), the due date for Response was April 3, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2004.

The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on May 4, 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 Complainants are companies pertaining to the same group, both being incorporated under the laws of the United Mexican States and engaged in the sale to consumers through consultants in Mexico and the United States of a plethora of cosmetics, toiletries and other personal care products resulting in joint annual revenues in excess of USD346,000,000 with regard to the combined Mexican and United States markets.

Complainant, Jafra, owns and has used nationwide in the United States for over 40 years the mark JAFRA, which is registered and subsisting under US Registration Nos. 677,471; 2,351,448 and 1,269,604, covering the sort of products mentioned in the above paragraph. The oldest registration dates back to 1959, and each and every one of the registrations predate the contested domain name’s registration date.

Complainant, Jafra International, owns and has used nationwide in Mexico for over 25 years the mark JAFRA, which is registered and subsisting under Mexican Registration Nos. 228576; 628142; 619948; 617715; 618219 and 613653, covering the sort of products indicated above. The oldest registration dates back to 1979 and each and every one of the registrations predate the contested domain name’s registration date.

The JAFRA trademark is a so-called fanciful mark, consisting of a coined term 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.

To advertise its products and provide information on the Jafra companies, Complainant, Jafra, also uses its trademark in connection with its website at “www.jafra.com”.

For its part, Respondent registered the domain name that is the subject of this dispute on July 28, 2004.

Having found out about Respondent’s registration of the domain name at issue and noting that the latter resolves to a pornographic website containing numerous links to sites of identical nature, on November 5, 2004, counsel for Complainant, Jafra International, contacted Respondent by e-mail with a demand that Respondent cease further use of the disputed domain name and transfer it immediately to Complainant, Jafra International. Following the unsolicited offer to sell the disputed domain name for USD1,000 made by a person purporting to act on behalf of Respondent, the Complainants jointly moved to commence the present proceedings.

5. Parties’ Contentions

A. Complainants

The Complainants’ submissions can be summarized as follows:

i. As a fanciful mark, JAFRA is inherently distinctive and therefore entitled to the strongest protection of all types of mark.

ii. The Complainants’ respective use and registration of the JAFRA mark in the United States and Mexico are sufficient to establish Complainants’ rights in the mark as required by paragraph 4(a)(i) of the Policy.

iii. The domain name at issue is confusingly similar to Complainants’ registered trademark as the mere addition of the generic term “products” or the gTLD “.com” are either irrelevant or legally insignificant to detract from a finding of confusion within the meaning of 4(a)(i) of the Policy.

v. Respondent’s registration and use of the contested domain name to attract visitors to Respondent’s pornographic website through initial interest confusion and to link them to other sites of the same type is not a bona fide offering of goods or services pursuant to applicable Policy case law.

vi. None of the defenses set forth in paragraph 4(c) of the Policy is available to Respondent. Thus, given the fanciful nature of the JAFRA mark, Respondent cannot possibly show that before any notice to it of the dispute, it engaged in use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

vii. Because “JAFRA” is a coined term, it is unlikely that Respondent has ever been known by either the domain name or a name corresponding to the domain name under paragraph 4(c)(ii) of the Policy.

viii. From a simple review of Respondent’s website, one can conclude that Respondent is not “making a legitimate noncommercial or fair use of the domain name without intent for commercial gain” within the meaning of paragraph 4(c)(iii) of the Policy.

ix. Several decisions under paragraph 4(b)(iv) of the Policy have held that registration of a domain name incorporating another’s mark and use of that domain name for a pornographic website reflects bad faith registration and use of the disputed domain name.

x. As supported by case law, bad faith use and registration pursuant to paragraph 4(b)(i) of the Policy is established in the instant case by Respondent’s offer, in response to Complainant, Jafra International’s, initial protest letter, to sell the disputed domain name for USD1,000, an amount in excess of Respondent’s documented out-of-pocket costs directly related to the contested domain name.

xi. The provision of false contact information to make it difficult to determine Respondent’s location, corroborates its bad faith use and registration of the disputed domain name.

No counter-arguments were submitted on behalf of Respondent.

6. Discussion and Findings

Preliminary

It is worth noting that even though Respondent’s failure to submit a Response does not automatically result in a decision in favor of the Complainant (as reflected in the recently published WIPO Overview of WIPO Panel Views on Selected UDRP Questions at paragraph 4.6), it is well established that the panel may accept all reasonable and supported allegations and inferences in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding it appropriate for the panel to draw adverse inferences from respondent’s failure to reply to the complaint) and also Vertical Solutions Management, Inc. v. webnet-marketing, Inc., National Arbitration Forum (NAF) Case No.95095 (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

On the other hand, in regard to the appropriateness for these proceedings to have been jointly instituted, given that the Complainants are part of the JAFRA group of companies, both having proprietary rights over the JAFRA mark and thus legal standing to assert their respective rights against Respondent, the Panel is satisfied that the Complainants have “sufficient interest in the disputed domain name for them to be joined in this action.” See Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537; also Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117.

General

According to paragraph 4(a) of the Policy, in order to succeed with its claim, Complainants must prove that each of the three following elements is present:

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.

First of all, the Panel admits that as an invented term that has no meaning other than as a trademark, the Complainants’ mark is inherently distinctive, and furthermore, it is well-known by consumers in the cosmetics and health care products’ sectors by virtue of its widespread use in Mexico and the United States over the years.

Secondly, as noted in Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415, the issue under this type of analysis is not whether confusion is likely in the trademark sense (that is, confusion as to source based on the domain name and its use in connection with a website) but rather, whether the domain name in issue, standing alone, is sufficiently similar to the Complainant’s trademark to justify a remedy under the Policy.

Thirdly, it is well established that the addition of the generic top-level domain (gTLD) “.com” is without legal significance under this type of analysis for the following reasons: use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific service provider as a source of goods or services. See Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127; Infinity Broadcasting Corp. v. Quality Services, Inc., WIPO Case No. D2000-0361 and Blue Sky Software Corp. v. Digital Sierra Inc. and Abdullah Khan, WIPO Case No. D2000-0165.

Fourthly, it stands to reason that as domain names are not case-sensitive, the use of lower case letters is of no relevance from the standpoint of comparing <jafraproducts.com> to “JAFRA”.

Turning to the relevant question of this part, on its face, it is evident that the disputed domain name is confusingly similar to the Complainants’ mark, where the latter is wholly included in the domain name, because the mere incorporation of a commonplace plural noun such as “products” is too tenuous and insubstantial to detract from this conclusion.

Indeed, case law has consistently confirmed that “when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words”. See Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 (“credit” added to mark EXPERIAN); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“parts” added to mark OKIDATA); Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, (“buildingsociety” added to trademark BRITANNIA); Chanel, Inc., v. Estco Technology Group, WIPO Case No. D2000-0413 (“chanelstore” and “chanelfashion” were found to be confusingly similar to the CHANEL mark).

The finding of confusion in this case as to overall impression, sound, connotation, and commercial impression is strengthened by the fact that the generic term “products” has an inextricable connection to the Complainants’ business so that there is every possibility that consumers will be misled by the disputed domain name given the notoriety of the JAFRA mark.

Accordingly, this Panel finds that the Complainants have proven the first threshold of paragraph 4(a) of the Policy.

B. Legitimacy of Respondent’s Interest

Complainants assert to have never granted Respondent any license or consent, express or implied, to use Complainants’ trademark in a domain name or in any other manner. Moreover, given the fanciful nature of the JAFRA mark and its registration in the United States and Mexico long prior to Respondent’s registration of the disputed domain name, it is submitted that none of the defenses set forth in paragraph 4(c) of the Policy is available to Respondent.

It is also claimed and supported on relevant Policy decisions that Respondent simply had no right to register and use the disputed domain name containing Complainants’ imaginative registered mark while linking it to a pornographic website.

In view of the foregoing and in concert with prior Policy decisions, the Panel is satisfied that Complainant has shown prima facie evidence with respect to this element of the Policy, thus shifting the burden of proof on Respondent. Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553; and Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467.

In light of this, the Panel chooses to view Respondent’s failure to submit a Response to the Complaint as evidence that it lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that Respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Accordingly, in the Panel’s opinion, there exists sufficient evidence to conclude that:

i) Respondent cannot possibly be known by the domain name in question as provided for in Policy paragraph 4(c)(ii), given the arbitrary nature of Complainants’ marks;

ii) Respondent is profiting by redirecting Internet users seeking Complainant Jafra’s website to a pornographic site, which conduct is not to be regarded as a bona fide offering of goods and services or a legitimate commercial use of a domain name within the meaning of Policy, paragraphs 4(c)(i) and (iii) pursuant to prevailing interpretations on the subject. See MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205 (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark).

Finally, the Panel finds Respondent’s use of the confusingly similar domain name to be particularly disruptive to the Complainants’ business activities as it attracts consumers primarily interested in its products to a pornographic website and furthers no legitimate interest on the part of Respondent. See Danish-American Promotion Aps v. Robert Capps, NAF Case No. FA94951.

As a result, the Complainants have demonstrated the second limb of paragraph 4(a) of the Policy.

C. Registration and Use in Bad Faith

This is a straightforward case of bad faith, in fact, “it is hard to imagine a more blatant exercise of cybersquatting” than the one present here. Singapore Airlines Limited v. P&P Servicios de Comunicacion S.L., WIPO Case No. D2000-0643 (finding that the domain name <singaporeairlines.com> is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith).

The Complainants have produced uncontested evidence showing that the disputed domain name is being used in connection with an adult content website.

In this regard, the Panel sides with Complainants’ contention that several decisions under paragraph 4(b)(iv) of the Policy have univocally held that registration of a domain name incorporating another’s mark and use of that domain name for a pornographic website reflects bad faith registration and use of the disputed domain name. See CCA Industries, Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148 (finding that the association with a pornographic website can itself constitute bad faith); Calvin Klein, Inc. v. Spanno Industries, NAF Case No. FA95283 (finding that linking Internet users that are seeking the complainant’s website to pornographic material is evidence of bad faith); American Express Company v. Global Marketing, NAF Case No. FA96610 (finding that using a domain name, which infringes upon another’s trademark rights, to offer pornographic images, is evidence of bad faith registration and use); Ty Inc. v. O.Z. Names, Eitan Zviely, WIPO Case No. D2000-0370 (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); and AltaVista Company v. West Coast Entertainment, Inc., NAF Case No. FA95265 (finding that associating a confusingly similar domain name with a pornographic website also constitutes bad faith).

On the other hand, it is also undisputed that the Respondent has provided false registration information, including a telephone number and mailing address corresponding to an entity other than Respondent. This is evidence of bad faith under paragraph 4(b) of the Policy. See Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138 and Oakley, Inc. v. Kenneth Watson, WIPO Case No. D2000-1658.

Lastly, the Panel additionally finds that due to the intrinsically distinctive character of Complainants’ trademarks, it is inconceivable that the contested domain name would have been registered and used if it were not for exploiting the fame and goodwill of Complainants’ marks by diverting Internet traffic intended for Complainant, Jafra’s, portal to an unrelated and radically distinct web page. Societe des Produits Nestle SA v. Telmex Management Services, WIPO Case No. D2002-0070.

Based on the above, the Panel determines that Policy, paragraph 4(a)(iii) has been satisfied.

7. Decision

In light of all the foregoing, this Panel concludes that the Complainants have met their burden as established by paragraph 4(a) of the Policy. In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <jafraproducts.com> be transferred to Complainant, Jafra Cosmetics, S.A. de C.V.

Reynaldo Urtiaga Escobar
Sole Panelist

Dated: May 30, 2005