The Complainant is Mehrbano Sethi / Innovative Technologies Pvt. Ltd of Punjab, Pakistan, represented by Constanza Olalquiaga, Chile.
The Respondent is David Brooks / Inland Technology Group Incorporated of Riverside, California, United States of America, represented by Turning Point Law, Inc., United States of America.
The disputed domain name <lusciouscosmetics.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2016. On January 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2016. The due date for Response was extended until February 16, 2016. The Response was filed with the Center on February 16, 2016.
The Center appointed Luca Barbero as the sole panelist in this matter on February 24, 2016. 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.
The Complainant is the owner of the Pakistan trademark No. 228272 for LUSCIOUS (figurative mark), registered on October 12, 2006, in class 3, and the Singapore trademark No. T1407009D for LUSCIOUS COSMETICS (figurative mark), registered on May 7, 2014, in class 3.1
The disputed domain name <lusciouscosmetics.com> was registered on January 17, 2002, and is pointed to a landing page generated by the hosting automation software Parallels Plesk.
The Complainant states that its company was founded in Pakistan in 2006 and has been selling beauty products in several countries, including through the e-commerce channel, since 2008.
The Complainant contends that disputed domain name is confusingly similar to its trademarks.
The Complainant also states that the Respondent has no rights or legitimate interest in the disputed domain name since i) the Respondent has not registered or applied for the trademark LUSCIOUS, according to the Complainant’s searches; ii) LUSCIOUS is not and has not been used by the Respondent in order to promote or commercialize any kind of goods or services; and iii) the Respondent is using the disputed domain name in order to promote Parallels products, which are not related to the Complainant’s ones.
The Complainant further asserts that the Respondent currently holds the disputed domain name in bad faith and is disrupting the Complainant’s business by preventing the trademark owner from reflecting its marks in the corresponding domain name.
The Complainant concludes that, considering the limited domain names available associated with the generic Top Level Domain (gTLD) “.com”, the continuous non-use or lack of real intention of use constitute bad faith, due to the fact that the ultimate goal of the Respondent seems to be none other than to prevent the holder of a confusingly similar registered trademark in numerous countries from offering its products through a domain name that consumers would most likely search for.
The Respondent informs the Panel that its company, Inland Technology Group Incorporated, is a full-service provider of software design, development and management services and that, since 2003, it has provided web development services on behalf of, and at the request of, the beneficial owner of the disputed domain name, which is identified as the company Luscious, LLC, established on May 15, 2000.
The Respondent asserts that the disputed domain name was originally registered on January 17, 2002 by its beneficial owner Luscious, LLC, and that said company operated an e-commerce web site at the disputed domain name where it sold cosmetics under the trademark LUSCIOUS COSMETICS well before the filing of the Complainant’s trademark, as highlighted in the historical screenshots of the Respondent’s web site dated September 12, 2005, available on the web site “www.screenshots.com”.
The Respondent also states that, as a matter of convenience, at various times, the Respondent, and not the beneficial owner, was named as registrant of the disputed domain name.
The Respondent asserts that the Complainant’s trademark LUSCIOUS registered in Pakistan is not the same as the disputed domain name while it appears to concede that the Complainant’s mark LUSCIOUS COSMETICS registered in Singapore is identical to the disputed domain name.
The Respondent informs the Panel that, on July 11, 2002, Luscious, LLC filed a trademark application with the United States Patent and Trademark Office (USPTO) for the mark LUSCIOUS COSMETICS, and that a contact email address based on the disputed domain name was indicated in the application, thus demonstrating the actual ownership of the disputed domain name by said company. Said application was abandoned on October 15, 2012 following an opposition proceeding against said application, which was confirmed by the Trademark Trial and Appeal Board in 2012.
The Respondent highlights that the company Luscious, LLC filed an International Trademark application under the Madrid Protocol for the registration of the mark LUSCIOUS COSMETICS, which was registered on August 9, 2006. Said International Trademark registration designated also European Union. The Respondent also points out that Luscious, LLC registered the trademarks LUSCIOUS-LITE and LUSCIOUS BLOOMS and stresses that the applications for registration of the mark LUSCIOUS COSMETICS were filed before the Complainant’s earliest registration of its mark LUSCIOUS and its 2014 registration of the mark LUSCIOUS COSMETICS. The Respondent further explains that Luscious, LLC ceased operation of its e-commerce web site in 2013 and, at said date, the Respondent replaced the e-commerce web site with the default web page provided by the web hosting company Parallels, in place until Luscious, LLC makes further use of the disputed domain name, without any intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks or service marks.
The Respondent also claims that its legitimate rights in the disputed domain name are supported by the fact that the Complainant, on more than one occasion, attempted to purchase the disputed domain name from Luscious, LLC.
As to the circumstances of bad faith, the Respondent states that Luscious, LLC did not register or renew the disputed domain name with the Complainant’s trademark in mind and had no knowledge of the Complainant, its web site, its business name or trademark when it registered or renewed the disputed domain name. The Respondent also adds that Luscious, LLC did not register or renew the registration of the disputed domain name with the intent to sell it to the Complainant, to disrupt the Complainant’s business, or to confuse consumers seeking to find the Complainant’s web site. The Respondent further states that Luscious, LLC did not register or renew the disputed domain name to prevent the Complainant from owning a domain name incorporating its trademark.
As to the use of the disputed domain name, the Respondent highlights that currently the disputed domain name is parked, and that the current visible web site is the web server’s default page which includes commerce links for the sale of the web server’s products wholly unrelated to the Complainant’s goods and services.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Complainant has provided evidence of ownership of a trademark LUSCIOUS registered in Pakistan in 2006 and a trademark LUSCIOUS COSMETICS registered in Singapore in 2014. The trademarks are respectively constituted of the words “luscious” and “luscious cosmetics” written in stylized form.
As stated in paragraph 1.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), ownership of a trademark generally satisfies the threshold requirement of having trademark rights, the location of the trademark, its date of registration, and the goods and/or services for which it is registered being irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
In addition, as indicated in paragraphs 1.11 of the WIPO Overview 2.0, figurative, stylized or design elements in a trademark are typically disregarded for the purpose of assessing identity or confusing similarity, being generally incapable of representation in a domain name.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to trademarks in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
The Complainant states that the Respondent does not have any rights or legitimate interests in the disputed domain name, arguing that the Respondent did not register or apply for the trademark LUSCIOUS, has not used the mark LUSCIOUS to promote or commercialize any kind of goods or services and has pointed the disputed domain name to a parking page.
According to the Panel’s review of the documents and statements submitted by the Respondent, the Panel finds that the Complainant has failed to demonstrate the Respondent’s absence of any right or legitimate interest in the disputed domain name for the following reasons.
While the Respondent is the registered owner of the disputed domain name, it has been proven to the satisfaction of this Panel that its beneficial owner is the company Luscious, LLC. It has been also demonstrated that Luscious, LLC originally applied for registering the mark LUSCIOUS COSMETICS before the USPTO on July 11, 2002, claiming first use on January 23, 2002, for products in International class 3, including cosmetics.
Furthermore, the historical screenshots of the web site “www.lusciouscosmetics.com” brought to the Panel’s attention by the Respondent show that the disputed domain name was used by the beneficial owner at least as of 2005 to promote cosmetics under the mark LUSCIOUS COSMETICS.
Therefore, the Panel finds that the Respondent, via its relationship with the beneficial owner of the disputed domain name, has demonstrated, for the purpose of this proceeding, that it has a legitimate interest in the disputed domain name.
The Panel finds that the Complainant has failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith.
Since the disputed domain name was registered several years before the Complainant came into existence and its trademarks LUSCIOUS and LUSCIOUS COSMETICS were registered, it is inconceivable how the Respondent could have been aware of the Complainant’s trademarks at the time of registration.
Furthermore, the disputed domain name is currently parked and there is no evidence that the Respondent might have registered it with the intention to sell it to the Complainant, to prevent it from reflecting its marks in a corresponding domain name or to derive profit from the likelihood of association with the Complainant.
In view of the above, the Panel finds that the Complainant has failed to prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
For the foregoing reasons, the Complaint is denied.
Luca Barbero
Sole Panelist
Date: March 22, 2016
1 In this regard the Panel notes that the Complaint was brought in the name of Mehrbano Sethi only, while the above-referenced trademark certificates are in the name of Innovative Technologies Pvt. Ltd. However, it has been established to the Panel’s satisfaction that Mehrbano Sethi is the Chief Executive Officer of the registered trademark holder. As such, the Panel considers that the Complaint was brought, in fact if not in name, on behalf of Innovative Technologies Pvt. Ltd, and accordingly the Panel is prepared to consider this entity as Co-Complainant to the dispute.