The Complainant is Groupement des Laboratoires Francais/Soras of France, represented by De Gaulle Fleurance & Associés, France.
The Respondent is Embryolisse USA of United States of America (“United States”), represented by McIntyre Thanasides Bringgold Elliott Grimaldi Guito & Matthews P.A., United States.
The disputed domain name <embryolisseusa.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2019. On March 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2019, 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 April 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2019. On April 22, 2019, the Respondent requested an extension to file a Response. On April 24, 2019, the Center granted the automatic 4-day Response extension until April 28, 2019. The Response was filed with the Center on April 24, 2019. On May 2, 2019, the Center received a supplemental filing from the Complainant.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on May 7, 2019. 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 a French company engaged in the manufacture of perfume, cosmetics and beauty care products, generally known as Laboratories Embryolisse. It is the holder of a number of trademarks including:
EMBRYO-LISSE, French Trademark Office, filed January 30, 1986, registration number 1404399, classes 3, 29, 30;
EMBRYOLISSE, French Trademark Office, filed September 12, 2006, registration number 3449943, class 3;
EMBRYOLISSE, United States Patent and Trademark Office (“USPTO”), filed December 6, 2002, registered November 16, 2004, registration number 2903734, class 3;
EMBRYOLISSE, French Trademark Office, filed January 9, 2006, registration number 3402507, class 5.
The Complainant also holds the domain names <embryolisse.com> and <embryolisse.fr>.
The Respondent was previously in a business relationship with the Complainant, selling the Complainant’s products in the United States. The business relationship began in about 2002 but ran principally from 2005, enduring until 2018, when it was terminated by the Complainant.
The disputed domain name according to the WhoIs was registered on September 14, 2005, in the name of Embryolisse USA. It is no longer active as a website or used except as an email address.
The Complainant’s contentions include the following.
It is contended that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The hyphen in those versions of the trademark where it is present is of no consequence. The addition of the term “USA” to the Complainant’s trademark in the disputed domain name is not sufficient to avoid confusion.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant relates an extensive history of its relationship with the Respondent, the key points of which may be summarised below.
The Complainant says it entered into written exclusive distribution agreements (“Agreements” or “Agreement”, according to context) with the Respondent in 2008 and 2010, the latter formally superseding the former. In the Agreements, the Respondent was granted the right to import, market and distribute certain of the Complainant’s products, and the right to use the Complainant’s trademarks in restricted ways, but there was no consent to register domain names incorporating the Complainant’s trademarks or to act in any way detrimental to the trademarks.
The Complainant says that the Respondent was notified in writing on May 31, 2018, in accordance with the terms of the 2010 Agreement, that the Agreement would be terminated on December 31, 2018.
The Complainant submits that the relevant date for the determination of whether the Respondent has rights or legitimate interests in the disputed domain name should be the date of the Complaint, according to previous UDRP cases and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
On November 29, 2018, the Complainant sent a cease and desist letter to the Respondent. The letter alleged that, among other things, the Respondent had used an Instagram account with reference to “embryolisseusa” to advertise and show illustrations of the competing product “Twinmedix ProEssentials”, in which the Respondent intended to trade in the future in order to replace its business with the Complainant. Financial matters were also raised. A follow-up letter was sent by the Complainant on January 16, 2019, with additional demands. In response, the Respondent has refused to transfer the disputed domain name to the Complainant.
The Complainant says the disputed domain name was registered and is being used in bad faith. It was registered by the Respondent in 2005, before the Agreements, at which time the Respondent was not authorised to use the Complainant’s trademarks in a domain name. Furthermore, the Agreements only authorised the Respondent to use the Complainant’s trademarks as a company name and not in a domain name. The 2010 Agreement also stipulated that the Respondent should not act in any way inconsistent with the Complainant’s intellectual property rights.
The Complainant says the Respondent was required to cease and desist from using the Complainant’s trademarks in any manner upon termination of the Agreement. The Respondent has used the disputed domain name in a way that would give the impression of still being an authorised distributor for the Complainant.
The Complainant has cited previous decisions under the Policy that it considers helpful to its case.
The Complainant requests the transfer of the disputed domain name.
The Respondent denies the Complainant. The Respondent’s contentions include the following.
From 2000 the Complainant’s products were promoted at relevant trade shows in the United States by one of the principals of the Respondent, Mr. Kost, who at that time was in an employment relationship with the Complainant through an associated company. Various company mergers or acquisitions eventually led in 2005 to Mr. Kost acquiring distribution rights in respect of certain of the Complainant’s products and, at some stage, the creation of the Respondent entity. The Respondent says that between 2005 and 2018 it grew annual sales of the Complainant’s products from USD 18,000 to USD 3 million. This was achieved organically, without help from the Complainant, its associated company or other investment.
The Respondent relates its promotion of the Complainant’s products, including particularly the involvement of makeup artists, and the promotion by those makeup artists of the Complainant’s products on educational tours to other countries. Relations with the Complainant were good until recently, including the Respondent’s introduction of distributors for Australia and Russia and some personal assistance to the Complainant’s family. However, in 2018, the Complainant terminated the Agreement, causing financial stress to the Respondent.
The Respondent concedes that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Respondent outlines a defence it says it would have under the United States Anti-Cybersquatting Consumer Protection Act.
The Respondent says it was not prohibited under the Agreements from registering the disputed domain name, which was beneficial to the Complainant in aiding the sales of products. The Complainant had known about the disputed domain name for more than a decade without complaint.
The disputed domain name is no longer functional as a website or for email. The Respondent expresses anxiety, however, that if it were to be transferred, the Complainant could receive emails from the Respondent’s historic contacts that might inadvertently refer to “private medical, financial or other vitally private information of Respondents and their employees”. In support of this contention, the Respondent has submitted an Affidavit sworn by Christopher D. Smith, an information technology professional, affirming these technicalities and the current status of the disputed domain name.
The Respondent denies the disputed domain name has been held in bad faith and says the Complainant’s accusations are disingenuous or dishonest. The Respondent requests that the disputed domain name should “remain dead.”
The Complainant’s supplemental filing is referred to below.
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Paragraph 12 of the Rules provides that the Panel, in its sole discretion, may request further statements or documents from either of the Parties. The Complainant’s communication to the Center of May 2, 2019, which was forwarded to the Panel, was an unsolicited Supplemental Filing. As observed by the distinguished panelist in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703: “A complainant should ‘get it right’ the first time and should have provided all the information necessary to prove its case from the material contained in the Complaint and its annexes alone. There is no right of reply under the Rules.” The Panel did not find the Supplemental Filing to be of assistance in this case and, in accordance with paragraphs 10 and 12 of the Rules, it will not be admitted.
It is conceded by the Respondent that the disputed domain name is confusingly similar to the Complainant’s trademark, and the Panel so finds under paragraph 4(a)(i) of the Policy.
The Complainant has asserted prima facie that since its Agreement with the Respondent has been terminated, the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Respondent’s claim of rights or legitimate interests in the disputed domain name is founded upon its use for a bona fide offering of goods or services, being in this case the Complainant’s products, between at least as early as 2005 and the end of 2018, when the 2010 Agreement was terminated. Paragraph 4.8 of the 2010 Agreement reads: “Upon termination of this Agreement, [the Respondent] shall cease and desist from use of [the Complainant’s] Trademarks in any manner”.
The 2010 Agreement was to run for five years from January 1, 2010. Paragraph 5 of the Agreement stated in part: “Thereafter, this Agreement shall be renewed for additional periods of two (2) years each, unless either party provides a written notice to the other party of its intent to not renew this Agreement no later than six (6) months prior to the end of the current term”. On May 31, 2018, the Complainant wrote to the Respondent giving seven months notice that the Agreement would not be renewed and would terminate on December 31, 2018.
As discussed in WIPO Overview 3.0 at section 2.11, in part, a respondent’s claim of rights is generally assessed in “the circumstances prevailing at the time of the filing of the complaint”. Furthermore, “a respondent claiming a right or legitimate interest in a domain name for example based on a prior agreement or relationship between the parties or based on past good-faith use [...] would not necessarily have rights or legitimate interests in the domain name, at the time a decision is rendered”.
Thus, at the date of the Complaint on March 25, 2019, the Agreement had been terminated and the Respondent had been required by the terms of the Agreement to “cease and desist from use of [the Complainant’s] Trademarks in any manner”. The holding of the disputed domain name being in this case a use of the Complainant’s trademark, the Respondent was without any right to do so after December 31, 2018.
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name “has been registered and is being used in bad faith”. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.
Panels interpret the phrase “has been registered and is being used in bad faith” in the conjunctive, that is, that registration in bad faith and use in bad faith must each be proven. Paragraphs 4(b)(i), (ii) and (iii) of the Policy focus on the circumstances applying at the point in time of registration of the disputed domain name, whereas paragraph 4(b)(iv) of the Policy refers to the use of the disputed domain name thereafter.
The disputed domain name was registered on September 14, 2005, according to the WhoIs. The first Agreement between the Complainant and the Respondent came into effect on January 1, 2008, although it appears the relationship between Mr. Kost (a principal of the Respondent) and the Complainant in various forms may date back to 2000, with Mr. Kost acquiring distribution rights to certain of the Complainant’s products in 2005. The disputed domain name also was registered in 2005.
Although it is difficult to know the mind of a registrant at the time of registration of a domain name, the Complainant has not produced any evidence to suggest that the Respondent made the registration for any other purpose than to further the sales of the Complainant’s products consequent upon the acquisition of the distribution rights in 2005. With reference to the provisions of paragraphs 4(b)(i), (ii), and (iii) of the Policy, which are without limitation, there is no evidence the Respondent has intended to sell the disputed domain name, or has engaged in a pattern of blocking registrations, or had the primary purpose of disrupting the business of a competitor, or had any other bad faith intent.
On the foregoing basis, the Complainant on the balance of probabilities cannot prove registration, and therefore registration and use conjunctively, of the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy, and the Complaint cannot succeed.
The Complainant not having succeeded, the question of use of the disputed domain name in bad faith is moot, however the Panel notes that some of the remaining matters raised in the Complainant are in the nature of alleged breaches of the Agreement, and the requirement that upon its termination, the Respondent shall cease and desist from use of the Complainant’s trademarks “in any manner”. The scope of the Policy is limited to the abusive registration of a domain name and does not extend to trademark or contract disputes.
The Respondent’s stated reason to want to retain the disputed domain name centres on the privacy of communications that may be received from the previous contacts of the Respondent and of related parties. The Respondent’s principals and employees apparently used email addresses associated with the disputed domain name over the years for some personal purposes apart from business. The Respondent is now worried that in the event of a transfer of the disputed domain name, the Complainant could make “catch-all” settings to receive all incoming emails including those addressed to previous users of subsidiary mailboxes, which could include “private medical, financial or other vitally private information”.
It may be that the Respondent’s fears are more theoretical than practical and that, after many years of a previous good relationship between the Complainant and the Respondent, the matter might be settled amicably in return for assurances that the disputed domain name will not be used by the Complainant in any way detrimental to the Respondent.
For the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Sole Panelist
Date: June 3, 2019