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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Napoleon Perdis Cosmetics Pty Limited V. Rebecca Jones

Case No. DAU2006-0014

 

1. The Parties

The Complainant is Napoleon Perdis Cosmetics Pty Ltd., of Chippendale, New South Wales, Australia, represented by Gray & Perkins Lawyers, of Sydney, Australia.

The Respondent is Rebecca Jones, of Melbourne, Victoria, Australia.

 

2. The Domain Name and Registrar

The disputed Domain Name <napoleonperdis.com.au> is registered with IntaServe Pty Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) electronically on November 21, 2006 and in hardcopy on November 30, 2006. On November 22, 2006 and subsequently, the Center transmitted by email to IntaServe requests for registrar verification in connection with the domain name at issue. On December 6, 2006, IntaServe 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 December 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2007.

The Center appointed Keith Gymer as the sole panelist in this matter on January 24, 2006. 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, Napoleon Perdis Cosmetics Pty Limited, has its principal place of business in Chippendale, New South Wales, Australia. It is in the business of retailing makeup and cosmetics and has been trading since the early 1990s. It has a Business Name Registration BN98063643 in New South Wales and other Business Name Registrations in Victoria, Queensland, Australian Capital Territory, Western Australia and South Australia. It has Australian Federal Trade Mark Registrations for the mark NAPOLEON PERDIS, including AU1003958 in Classes 3, 16, 41 and 44 dating from May 27, 2004 and AU1097399 in Classes 3, 16, 18 and 21 dating from February 6, 2006. It also has the domain name <napoleonperdis.com>, registered in 2002, and used for its website at “www.napoleonperdis.com”.

The Respondent, Rebecca Jones, holds the Domain Name registration of <napoleonperdis.com.au> as a private individual.

According to the auDA records, the Domain Name <napoleonperdis.com.au> was registered in the Respondent’s name on August 29, 2006.

5. Parties’ Contentions

A. Complainant

Pertinent extracts from the Complainant’s submissions are provided below:

1) The Domain Name is identical to a name, trade mark or service mark in which the Complainant has rights:

(a) [T]he Complainant is the owner of the trade mark NAPOLEON PERDIS (the Trade Mark) in Australia. The Trade Mark incorporates the first name and the surname of the founder and majority shareholders of the Complainant, Mr. Napoleon Perdis.

(b) The Complainant is the registered proprietor in Australia of the Trade Mark pursuant to the following trade mark registrations:

(i) Registration number 1003958; and

(ii) Registration number 1097399.

(c) In addition to the goods and services covered by the Trade Mark registrations, the Trade Mark is also used by the Complainant with respect to the wholesaling and distribution of goods, which include without limitation the Complainant’s cosmetic products.

(d) The Trade Mark is used by the Complainant as its business name (the Business Name).

(e) The Complainant is the registrant of the domain name <napoleonperdis.com>.

(f) The Domain Name is identical to both the Trade Mark and the Business Name.

2) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name

(a) Respondent has not lawfully developed, in the course of trade, a reputation in the Trade Mark. The Respondent has not sought to challenge the Complainant’s ownership or use of the Trade Mark.

(b) When visited online by the Complainant, the Domain Name has defaulted to a website with the URL “http://www.cosmetics-guide-online.com/cosmetics-makeup-tips-beautiful-skin.html” (the Competitor’s Website).

(c) Cosmetics, makeup and similar goods are offered for sale or promoted at the Competitor’s Website.

(d) The Respondent has not responded to the Letter of Demand [sent to the Respondent by the Complainant’s lawyers on October 11, 2006]. The Complainant is aware of no basis upon which the Respondent was entitled to register the Domain Name or to use it in the course of trade. The Complainant relies upon the Letter of Demand as specifying the grounds upon which the Respondent’s registration and use of the Domain Name are unlawful.

3) The Domain Name was registered or is subsequently being used in bad faith.

(a) For the reasons given in the Letter of Demand, the Respondent is, by using the Domain Name, intentionally attempting to attract for commercial gain, Internet users to the Competitor’s Website, by creating a likelihood of confusion with the Complainant’s Trade Mark as to the source, sponsorship, affiliation or endorsement of the Competitor’s Website or of products or services on the Competitor’s Website. Further, or in the alternative, by continuing as the registered proprietor of the Domain Name, and by continuing to use the Domain Name in the course of trade, since delivery of the Letter of Demand, the Respondent has had flagrant disregard for the Complainant’s rights and has therefore acted in bad faith.

The Complainant requests that the disputed Domain Name should be transferred to the Complainant.

B. Respondent

The Respondent did not offer any response to the Complainant’s contentions.

 

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy the Complainant is required to prove:

(i) the domain name is identical or confusingly similar to a name (Note 1), trademark or service mark in which the Complainant has rights; and

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

(iii) the domain name has been registered or subsequently used in bad faith.

Note 1

For the purposes of this policy, auDA has determined that a “name … in which the complainant has rights” refers to:

a) the Complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or

b) the Complainant’s personal name.

Note 2

For the purposes of this policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it is the registered proprietor of Business Name registrations and of Australian Registered Trade Marks for the name NAPOLEON PERDIS. These registrations predate the apparent date of registration by the Respondent of the Domain Name.

It is well established for the purposes of the Policy that the domain suffix (“com.au”) is to be discounted in consideration of the identity or similarity of the Domain Name.

The Panel therefore finds that the Domain Name <napoleonperdis.com.au> is effectively identical to the business name and trade mark, NAPOLEON PERDIS, in which the Complainant has rights.

The Complainant has established the requirement of Paragraph 4 (a)(i) of the Policy.

B. Rights or Legitimate Interests

As noted above, the Complainant has made a number of contentions regarding the Respondent’s alleged lack of any rights or legitimate interests in respect of the Domain Name.

The Respondent has not challenged any of the Complainant’s submissions, nor has she provided any arguments or evidence of her own to support a claim to have such rights and legitimate interests herself.

The evidence shows that the Respondent is not herself known by the Domain Name, but rather that the Domain Name has been used as a tool to redirect web users from “www.napoleonperdis.com.au” to a website at “www.cosmetics-guide-online.com”, which appears to provide links to other commercial cosmetics sites run by parties unrelated to the Complainant. Coincidentally, the domain name registrant’s contact for <cometics-guide-online.com> is listed as one Jessica Jones, with a contact email given as <ignore@sexyserv.com>. The implication made in the Complainant’s Letter of Demand is that the Respondent may be related to this person. In any event, there no evidence before the Panel indicating the Respondent has rights or legitimate interests in the Domain Name at issue.

The Panel therefore finds that, on the evidence, the Respondent has no rights or legitimate interests herself in respect of the Domain Name at issue.

The Complainant has established the requirements of Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As noted above, the evidence indicates that the Respondent has not registered the Domain Name <napoleonperdis.com.au> innocently on the basis of any rights of her own, nor in ignorance of the Complainant’s rights and reputation in the mark. Rather the Panel considers that the Respondent has in all likelihood knowingly taken the Complainant’s mark and obtained the Domain Name registration <napoleonperdis.com.au> with the deliberate intention of making use of it in the form of a web address to redirect web surfers to one or more other websites for the potential benefit of herself or others and to the deliberate disbenefit of the Complainant. In doing so, the Respondent has misappropriated the Complainant’s rights and goodwill in the mark.

The Respondent’s conduct would appear to fall squarely within the example of Registration and Use in Bad Faith given at Paragraph 4(b)(iv) of the Policy whereby:

“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location.”

Through her registration and use of the Domain Name the Respondent is in all probability knowingly exploiting for the potential commercial benefit of others, the reputation and goodwill of the Complainant in the mark, with complete disregard for the Complainant’s rights and without the authority or consent of the Complainant.

The Panel therefore finds that, on the evidence, the Domain Name has been registered and subsequently used in bad faith.

The Complainant has established the requirement of paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <napoleonperdis.com.au> be transferred to the Complainant.

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Keith Gymer
Sole Panelist

Dated : January 31, 2007