The Complainant is Makeup Art Cosmetics Inc. of New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondents are Zhen Zhihua of Shanghai, the People's Republic of China; Lin Ronghua of Fujian, the People's Republic of China; Wen Yuanhua of Shanghai, the People's Republic of China (“Respondent”).
The disputed domain names <maccosmeticsblog.com>, <maccosmeticsshop.com> and <macmakeupshop.com> are registered with Xiamen ChinaSource Internet Service Co., Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2010. On May 31, 2010, the Center transmitted by email to Xiamen ChinaSource Internet Service Co. a request for registrar verification in connection with the disputed domain names. On June 2, 2010, Xiamen ChinaSource Internet Service Co., Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 3, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On the same day, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on June 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 30, 2010.
The Center appointed Dr. Hong Xue as the sole panelist in this matter on July 12, 2010. 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, Makeup Art Cosmetics Inc., is a company that has been making and selling cosmetics under the MAC mark series for more than 20 years.
The Respondents (Zhen Zhihua, Lin Ronghua and Wen Yuanhua) registered the disputed domain names, <maccosmeticsblog.com>, <maccosmeticsshop.com> and <macmakeupshop.com> respectively on June 18, 2009, August 25, 2009 and August 10, 2009.
The Complainant contends that all three disputed domain names are under the common management and control of a single, unknown owner and requests the dispute be tried in a single proceeding.
The Complainant contends that the disputed domain names <maccosmeticsblog.com>, <maccosmeticsshop.com> and <macmakeupshop.com> are confusingly similar to the trademark MAC, the registration and use of which by the Complainant long precedes the registration of the disputed domain names.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant contends that the disputed domain names were registered and are being used in bad faith.
The Complainant requests that the disputed domain names <maccosmeticsblog.com>, <maccosmeticsshop.com> and <macmakeupshop.com> be transferred to it.
The Respondent did not reply to the Complainant's contentions.
Three disputed domain names were registered under three different personal names. The Complainant, however, files a common Complaint against all three domain names.
According to paragraph 3(c) of the Rules, the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. The Panel, in consideration of the Complainant's submission that all three disputed domain names are under the common management and control of a single, unknown owner in light of the present circumstances of this case, including such common details as WhoIs details, etc., and the Respondent's non-response to the Complainant's submission and the previous decisions issued under the Policy (see CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071), determines that the Complaint proves the domain names are registered by the same holder and can relate to all three domain names under paragraph 3(c) of the Rules.
The language of the registration agreement for the disputed domain names <maccosmeticsblog.com>, <maccosmeticsshop.com> and <macmakeupshop.com>, as confirmed by the concerned Registrar, is Chinese. The Complainant requests that the language of proceeding be English through proving that the Respondent has sufficient capacity to present its case in English. The Respondent did not make any submissions in relation to the language of proceeding even though the Center's communications to this effect were both in English and in Chinese.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Given that each Party has been given a fair opportunity to present its case as prescribed in the Rules, paragraph 10(b), but the Respondent did not dispute adopting English the language of proceeding and that the disputed domain names are in English, etc., the Panel determines under the Rules, paragraph 11(a) that English shall be the language of proceeding.
Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such requirement, a complainant must prove its trademark rights and the similarity between the disputed domain name and its trademark.
The Panel finds that before the registration of the disputed domain names the Complainant's MAC mark series had been registered and used in a number of countries. In China, where the Respondent resides in, the Complainant's mark MAC & device was registered in as early as 1996 and the character mark MAC was registered in 2008.
The disputed domain names are <maccosmeticsblog.com>, <maccosmeticsshop.com> and <macmakeupshop.com>. Apart from the generic top-level domain suffix “.com”, “maccosmeticsblog” consists of “mac”, “cosmetics” and “blog”; “maccosmeticsshop” consists of “mac”, “cosmetics” and “shop”, and “macmakeupshop” consists of “mac”, “makeup” and “shop.” The Panel finds that all three domain names show a clear pattern of beginning with the Complainant's mark MAC registered and used on cosmetics products and following with either descriptive or generic terms related to the Complainant's cosmetics business. Therefore, the disputed domain names are confusingly similar to the Complainant's registered mark. The Panel finds that the Complainant has proven the first element required by paragraph 4(a) of the Policy.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names and, as stated above, the Respondent did not provide any information to the Panel asserting any right or legitimate interest it may have in the disputed domain names.
It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business on the present record. Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent's rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply here. To the contrary, the lack of a Response leads the Panel to draw a negative inference.
Therefore, and also in light of the Panel's findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the Complainant has proven the second element required by paragraph 4(a) of the Policy.
The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. The Respondent did not respond.
Through examining the evidence that was submitted by the Complainant and not disputed by the Respondent, the Panel notes the facts that the website set up at the disputed domain name <macmakeupshop.com> displays prominently the mark MAC, copies the content from the Complainant's website at “www.maccosmetics.com” and appears to sell unauthorized MAC products. The Complainant submits that the Respondent states on the website that “[M]acmakeupshop.com is a top online MAC makeup information site dedicated to giving our visitors top beauty and make up secrets and services.”
Since the disputed domain name <macmakeupshop.com> was registered and is fully controlled by the Respondent, the Respondent is responsible for any use of the disputed domain name. The use of a disputed domain name that is confusingly similar to the Complainant's MAC mark to attract consumers to a website that is selling unauthorized MAC products marked with MAC is highly likely to cause confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website or of the products on the website. The Panel, therefore, finds that this is adequate to conclude that the Respondent has registered and is using the disputed domain name in bad faith prescribed under the Policy, paragraph 4(b)(iv).
The Panel notes that the other two disputed domain names, <maccosmeticsblog.com> and <maccosmeticsshop> are not associated with any active website. Given that the Respondent has engaged in a pattern of conduct to register multiple domain names to prevent the owner of the trademark MAC from reflecting the mark in a corresponding domain names (and noting the nature of the disputed domain name themselves), the Panel finds that the Complaint has also proven the Respondent's bad faith prescribed under the Policy, paragraph 4(b)(ii).
Therefore, the Complainant has successfully proven the third element required by paragraph 4(a) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <maccosmeticsblog.com>, <maccosmeticsshop.com> and <macmakeupshop.com>, be transferred to the Complainant.
Dr. Hong Xue
Sole Panelist
Dated: July 26, 2010