WIPO Domain Name Decision: D2006-0716

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jafra Cosmetics, S.A. de C.V. v. Spiral Matrix

Case No. D2006-0716

1. The Parties

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

The Respondent is Spiral Matrix, 1st Floor Muya House, Kenyatta Ave., Eldoret, Kenya.

2. The Domain Names and Registrar

The disputed domain names <jafrabix.com>, <jafracosmeticsinternational.com>, <jaframexico.com> and <jafraproduct.com> are registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2006. On June 9, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On June 9, 2006, Intercosmos Media Group d/b/a directNIC.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 June 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2006.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on July 5, 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 has used the mark JAFRA in connection with a variety of cosmetics, toiletries, and other personal care products for over 40 years. The mark JAFRA is a coined word that was created by the partners of the Complainant. There are two Trademark Registrations in the United States for JAFRA, dating back to April 21, 1959. The Complainant’s licensee in the United States has distributed JAFRA products through a large sales force, achieving recent annual sales of $95,000,000. The Complainant has developed a significant reputation in the cosmetic and personal care industry.

The Complainant has owned the domain name <jafra.com> for many years. The Complainant’s website provides access to individuals interested in purchasing JAFRA products to learn about the company and its products, locate a consultant in their area, and a link to that consultant’s website, whereby the individual may place an order for JAFRA products. The Complainant’s website contains information regarding sales of JAFRA products in the United States, and in many foreign countries, including Mexico.

The Respondent registered the <jafrabix.com> domain name on November 26, 2005, the <jafraproduct.com> and <jaframexico.com> domain names on January 15, 2006; and the <jafracosmeticsinternational.com> domain name on April 23, 2006. At the date of the Complaint, the Respondent was operating active websites using these domain names.

The Complainant’s counsel sent a letter to the Respondent on February 8, 2006 advising the Respondent of the Complainant’s intellectual property rights in the JAFRA trademark, and demanding that the Respondent cease using the <jafrabix.com>, <jafraproduct.com>; and <jaframexico.com> domain names. The Respondent continued to use the domain names and subsequently registered the <jafracosmeticsinternational.com> domain name on April 23, 2006.

The Respondent has failed to file any Response in the present proceedings.

5. Parties’ Contentions

A. Complainant

(a) Identical or Confusingly Similar

The Complainant owns two trademark registrations for the mark JAFRA in the United States. The trademark is a coined term which is inherently distinctive and which is entitled to the strongest possible protection as a brand. The domain names <jafraproduct.com>, <jafrabix.com>, <jaframexico.com>, and <jafracosmeticsinternational.com> each contain the Complainant’s registered trademark JAFRA in its entirety and as a first and dominant element. Each of the domain names then contains a second element which is a more generic term or geographic designation as in “cosmetic” and “international”, “mexico”; or the word “bix” which is a misspelling of “biz”, the recognized abbreviation for business. Prior Panel decisions have made it clear that the addition of geographic designations, generic or descriptive terms do not alter the fact that the domain name is confusingly similar to the mark.

(b) Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the domain names <jafraproduct.com>, <jaframexico.com>, <jafrabix.com> and <jafracosmeticsinternational.com>. The Complainant’s use of its JAFRA trademark predates the Respondent’s registration of all four domain names by approximately 40 years. The Complainant has not licensed or authorized the Respondent to use or register the JAFRA mark. The Respondent uses the domain names as portal sites to divert visitors to various third-party websites, including websites which sell products of the Complainant’s competitors, which use is not a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the domain name. The mark JAFRA is a coined term and, to Complainant’s knowledge, is not a recognized first name or surname in the United States . or in any foreign country. There is no evidence that the Respondent has ever been known by either the domain names or names corresponding to the domain names.

(c) Registered and Used in Bad Faith

The Respondent’s domain names were registered and are being used in bad faith based on the following factors: (i) registering a 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 for monetary gain; (ii) a pattern of registering domain names in order to prevent the owner of a trademark from registering corresponding domain names; and (iii) diverting traffic through confusion.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The first issue in this matter is whether the domain names <jafraproduct.com>, <jaframexico.com>, <jafrabix.com>, and <jafracosmeticsinternational.com> are confusingly similar to the Complainant’s mark. There are two elements that must be satisfied to establish this: (a) the Complainant has rights in the particular mark or marks; and (b) the domain names in question are identical or confusingly similar to the mark.

The first element is readily established and independently verified by reference to the applicable Trademarks Register. In this case, presentation of certified copies of United States registrations satisfies the threshold requirement of having rights in the mark JAFRA (Imperial College of Science, Technology and Medicine v. Zahid Khan (for Imperial College Management School Alumni Association – ICMSAA), WIPO Case No. D2000-1079).

The domain name <jafraproduct.com> contains as a first and dominant element the mark JAFRA and the addition of the word “product” as secondary element. The word “product” is a generic term and the addition of this secondary element does not differentiate the domain name from the trademark. Prior Panel decisions have made it clear that the addition of generic or descriptive terms do not alter the fact that the domain names are confusingly similar to the marks (see Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254 and Jafra Cosmetics, S.A. de C.V. v. Unais, Inc., WIPO Case No. D2005-0926, where it was decided that the domain name <jafracosmetic.com> was confusingly similar to the Complainant’s mark JAFRA).

The domain name <jafrabix.com> contains as a first and dominant element the mark JAFRA and the addition of the secondary element “bix”. The Panel accepts the Complainant’s argument that the Respondent has engaged in “typosquatting” by deliberately choosing “bix”, the misspelling of the term “biz”, as its secondary element in the domain name. Ample authority exists to support this conclusion, even when it applies to the secondary element. (Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337).

The domain names <jafracosmeticsinternational.com> and <jaframexico.com> also contain as a first and dominant element the mark JAFRA and the addition of a generic or geographical term as a secondary element. The addition of the word “cosmetics” does not reduce the likelihood of confusion, but rather increases the likelihood of confusion since it serves to draw a closer connection to the business associated with the registered mark (see Jafra Cosmetics, S.A. de C.V., supra), where it was decided that the domain name <jafracosmetic.com> was confusingly similar to the Complainant’s mark JAFRA. The addition of the words “international” in <jafracosmeticsinternational.com> and “mexico” in <jaframexico.com> do not alter the fact that the names are confusingly similar to the Complainant’s mark. Prior Panel Decisions have held that the addition of the geographical terms such as “international” and “mexico” do not serve to differentiate the domain names from the marks in question (Société des Hôtels Meridien v. Spiral Matrix/Kentech Inc., WIPO Case No. D2005-1196).

The Panel therefore finds that the Complainant has satisfied the first requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the domain names <jafraproduct.com>, <jafrabix.com>, <jaframexico.com> and <jafracosmeticsinternational.com>. The Complainant has provided convincing evidence that its JAFRA trademark predates the Respondent’s registration of its domain names by at least 40 years and that there is no relationship between the Complainant and Respondent giving rise to any license, permission or authorization of the disputed domain names. Because the Respondent failed to respond to the Complaint, the Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy, (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The evidence also shows that the Respondent uses the domain names as portal sites to divert internet traffic to websites which sell products of Complainant’s competitors . The Panel accepts the Complainant’s argument that use of the Complainant’s mark as a domain name to divert traffic to websites offering products of Complainant’s competitors is not bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use of the domain name (F. Hoffmann-La Roche AG v. Spiral Matrix, WIPO Case No. D2006-0326).

The Panel also accepts Complainant’s argument that JAFRA is a coined term and that the Respondent has not been known by either the domain names or names corresponding to the domain names and does not have any rights or legitimate interest in the domain names. See (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).

The Panel therefore finds that the Complainant has met the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant’s argument that the essential facts in this case correspond to the example of bad faith cited in paragraph 4(b)(iv) of the Policy.

Firstly, the Respondent uses the domain names <jafraproduct.com>, <jafrabix.com>, <jaframexico.com>; and <jafracosmeticsinternational.com> as a portal site offering links to the sites of the Complainant’s competitors. As noted above, the disputed domain names are confusingly similar to the Complainant’s mark. This likelihood of confusion will result in diversion of internet traffic from the Complainant’s site to the Respondent’s sites. In this regard, it is have been deemed by numerous WIPO Panels that attracting internet traffic and diverting it to website(s) selling products of complainant’s competitors by using a domain name which is identical or confusingly similar is evidence of bad faith under paragraph 4(b)(iv) of the Policy. (See Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. 2005-0556). The Panel in Deutsche Telekom Ag v. Spiral Matrix, WIPO Case No. 2005-1145, stated:

“the fact that Respondent chose to register [four] domain names all comprehensive of Complainant’s registered trademark, combined with the addition of generic terms which are descriptive of one of Complainant’s activities, with the use of the same domain names to show sponsored links promoting goods and services of Complainant’s competitors, may be considered further inference of bad faith.”

Secondly, the Panel infers that the Respondent is benefiting from this confusion and diversion by receiving “click-through” commissions in accordance with conventional practices on the internet when customers reach a site through a link on a portal. (Ocean Pacific Apparel Corp. v. Spiral Matrix, WIPO Case No. D2006-0287).

Thirdly, by registering domain names that contain as a first and dominant element the Complainant’s trademark, the Respondent is attempting to take advantage of the Complainant’s reputation by capturing traffic from internet users looking for the Complainant. This form of “cybersquatting” is considered bad faith within the meaning of the Policy (Deutsche Telekom Ag v. Spiral Matrix, WIPO Case No. 2005-1145).

Thus, for all the above-mentioned reasons, the Panel finds that the Complainant has met the requirement of paragraph 4(a)(iii) of the Policy.

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, <jafraproduct.com>, <jafrabix.com>, <jaframexico.com>, and <jafracosmeticsinternational.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist

Dated: July 19, 2006