The Complainants are Natura Cosméticos S/A of São Paulo, Brazil, Indústria e Comércio de Cosméticos Natura Ltd. of São Paulo, Brazil, represented by Ricci Advogados Associados, Brazil.
The Respondent is Ricardo Euzébio Ribeiro of Aracaju, Ceará, Brazil, represented by Internet Lawyers USA, P.C, United States of America.
The disputed domain name <perfumesnatura.com> (“Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2010. The Complaint as initially filed incorporated two domain names (<perfumesnatura.com> and <perfumenatura.com>). On September 10, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On September 21, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response informing that the registrant of <perfumenatura.com> domain name was different from that of the <perfumesnatura.com> domain name. The Center sent an email communication to the Complainant on September 27, 2010 informing that as the registrants of the two disputed domain names were different, a new complaint would be necessary. The Complainant filed an amendment to the Initial Complaint on October 1, 2010. The Center verified that the Initial Complaint together with the amendment to the Complaint (together, 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 Respondent of the Complaint, and the proceedings commenced on October 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2010. The Response was filed with the Center on October 28, 2010.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 11, 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.
This Complaint involves two Complainants: Natura Cosméticos S/A. and Indústria e Comércio de Cosméticos Natura Ltda. Both Complainants own trade mark registrations relevant to the dispute.
The Respondent contends that the bringing of action by multiple complainants is in contravention of the Rules and the Policy and that accordingly the Complaint should be denied.
Many cases have discussed the issue of multiple complainants. The case of Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331, included the following discussion regarding the extent to which the Policy and the Rules deal with the issue of multiple complainants:
"Neither the Policy nor the Rules expressly provides for the consolidation of multiple complainants in a single complaint. While both the Policy and Rules use the term “complainant” throughout, the Policy and Rules do not expressly preclude multiple legal persons from falling within the term “complainant”."
It is clear from this case and from numerous other decisions that a complaint may be submitted by multiple related parties where there are common interests in the disputed domain name (See National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021; Mucos Emulsions, GmbH and marlyn Nutraceuticals, Inc. v. Esex.org and Kim Taeho, WIPO Case No. D2000-1513; Bettina Liano and Bettina Liano Pty Limited v. Khanh Kim Huynh, WIPO Case No. D2000-0891; and NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128).
The Panel accepts that it is appropriate for the Complaint to be filed by multiple complainants in the present case, as both Complainants have a common interest in the Domain Name, and while the Complainants are separate legal entities, they are both engaged in common business. This is consistent with two previous administrative cases filed by the Complainant in respect of the NATURA mark, where filing of a complaint by the same two complainants was allowed (See Natura Cosméticos S.A., Industria e Comércio de Cosméticos Natura Ltda. v. Belize Domain Whois Service Lt, WIPO Case No. D2007-1165; and Natura Cosméticos S/A and Indústria e Comércio de Cosméticos Natura Ltda. v. N/A, WIPO Case No. D2008-1128).
For the remainder of this decision, the Complainants shall be referred to as the "Complainant", unless otherwise indicated.
The Complainant comprises of two Brazilian companies which have been operating in the cosmetics industry for almost 40 years, selling cosmetics products (including perfumes) in Brazil and various other international markets (including Argentina, Peru, Bolivia, Chile, Colombia, Mexico, Venezuela and France). The Complainant markets its goods using the NATURA trade mark and each of the Complainants own trade mark registrations comprising of the word "natura" on its own and with additions in many jurisdictions throughout the world, including the United States of America. The Complainant has an extensive trade mark portfolio for NATURA and has widely used this mark (and variations thereof) on various cosmetics and perfume products.
The Respondent appears to be an individual resident in Brazil. The Respondent registered the Domain Name on April 8, 2010. Upon becoming aware of the Domain Name, the Complainant sent a warning letter to the Respondent requesting the cancellation of the Domain Name (as well as the <perfumenatura.com> domain name, which was registered by the Respondent on the same day and which is the subject of separate administrative proceedings filed by the Complainant). The Respondent replied offering to sell the Domain Name for R$ 25,000 and offering to sell the <perfumenatura.com> domain name for R$ 30,000. The Respondent subsequently transferred the <perfumenatura.com> domain name to a third party.
The Complainant's contentions can be summarised as follows:
a) the Domain Name is confusingly similar to the Complainant’s NATURA trade mark and contains the word “perfumes”, which is a description of the business activities of the Complainant;
b) the Complainant’s NATURA trade mark has been acknowledged by the Brazilian Patent and Trademark Office as being highly renowned and the Respondent should have known of the NATURA trade mark;
c) the Respondent has no rights or legitimate interests in respect of the Domain Name and is not involved in the perfume industry;
d) the Domain Name was registered and is being used in bad faith;
e) the Complainant sent a warning letter to the Respondent regarding the Domain Name and the <perfumenatura.com> domain name and the Respondent offered to sell the Domain Name to the Complainant for R$ 25,000 and offered to sell the <perfumenatura.com> domain name for R$ 30,000. After receiving the Complainant’s warning letter, the Respondent transferred the <perfumenatura.com> domain name to a third party; and
f) the Respondent intends to confuse the public into believing that the Domain Name is in some way associated with the Complainant.
The Respondent's contentions can be summarised as follows:
a) the present case is not a clear case of “cybersquatting” and should not be decided according to the UDRP process;
b) the bringing of action by multiple complainants is in contravention of the Rules and the Policy and that the Complaint should be denied because of this deficiency in the Complaint;
c) the Complainant has not discharged its burden of proof in proving that the Respondent does not have a legitimate interest in the Domain Name; and
d) the Complainant has not proven that the Respondent has registered and used the Domain Name in bad faith.
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trade mark 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; and
(iii) the Domain Name has been registered and is being used by the Respondent in bad faith.
The Panel accepts that the Complainant has rights in respect of the NATURA trade mark on the basis of the extensive international portfolio of trade mark registrations owned by the Complainant for NATURA.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case ”.com“ should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0767).
The Domain Name incorporates the Complainant's NATURA mark in its entirety. The only difference between the Domain Name and the Complainant's NATURA mark is the inclusion of the word "perfumes" as a description. It is well-established that in cases where the distinctive and prominent element of a disputed domain name is the complainant's mark and the only addition is a generic term that adds no distinctive element, such an addition does not negate the confusing similarity between the disputed domain name and the mark. See Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088.
The Panel finds that "natura" is the distinctive and prominent component of the Domain Name and the addition of the word "perfumes" does nothing to distinguish it from the Complainant's trade marks. Given that the Complainant is in the business of manufacturing and selling cosmetics and perfumes, the "perfumes" component of the Domain Name if anything serves to increase the likelihood that consumers will be misled into thinking that the Domain Name is somehow associated with the Complainant.
The Panel accordingly finds that the Domain Name is confusingly similar to the NATURA mark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that the evidence submitted by the Respondent is insufficient to show that the Respondent has any rights in any trade marks or service marks which are identical, similar or related to the Domain Name. Therefore, the Panel will assess the Respondent's rights in the Domain Name (or lack thereof) based on the Respondent's use of the Domain Name in accordance with the available record.
The Panel accepts that the Complainant has not authorised the Respondent to use the NATURA trade mark. The Panel further accepts that the Respondent has not become commonly known by the Domain Name.
Accordingly the only way for the Respondent to acquire rights or legitimate rights in the Domain Name for the purposes of 4(a)(ii) of the Policy would be through use of the Domain Name for legitimate noncommercial purposes or in connection with a bona fide offering of goods or services.
The Domain Name points to a website which features sponsored links and click-through advertising. The Panel assumes that the Respondent profits from the advertisement and promotion of these third party goods and services. The use of a domain name containing a well-known trade mark for the purpose of collecting referral fees from sponsored advertising links, has been consistently held not to be a legitimate offering of goods or services (See PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006 0162; and Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437).
The Panel finds that there is insufficient evidence that the Respondent can assert a right or legitimate interest in the Domain Name. The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the disputed Domain Name.
Given the fame of the Complainant's NATURA trade mark, the Panel accepts that the Respondent has registered and used the Domain Name solely for the purpose of capitalising on the Complainant's reputation and goodwill to generate profits, not only by attracting to the website customers who the Panel accepts would be drawn to the website on the mistaken assumption that the website was authorised by or connected with the Complainant, but by then redirecting those customers to competitors of the Complainant. See Control Techniques Ltd. v. Lektronix Ltd., WIPO Case No. D2006-1052; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556. In these circumstances the Panel finds that there is no basis on which to infer that the Respondent has used the Domain Name in any manner or for any purpose otherwise than in bad faith.
It is also relevant to the issue of bad faith that the Respondent offered to sell the Domain Name to the Complainant for an amount exceeding the Respondent's out of pocket expenses in relation to the Domain Name. It is well established that the offer to sell a domain name in excess of the out of pocket expenses of the respondent is evidence of bad faith. See The Board of Regents of the University of Nebraska v. Bill Saedlo, WIPO Case No. D2000-0154; and Adamovske Strojirny v Tatu Rautiainen, WIPO Case No. D2000-1394).
The Respondent's bad faith is further evidenced by the fact that after receiving a warning letter regarding the Domain Name, the Respondent proceeded to transfer an additional domain name featuring the Complainant's NATURA trade mark (<perfumenatura.com>) to a third party. In the circumstances it can only be assumed that the Respondent transferred the <perfumenatura.com> domain name with a view to preventing the Complainant from recovering the domain name.
The Panel notes that the Respondent has registered many domain names, a number of which incorporate well-known brands. This pattern of registering domain names incorporating well-known brands also constitutes clear evidence of bad faith. See NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128.
In the circumstances, the Panel finds that there is no basis on which to infer that the Respondent has registered and used the Domain Name in any manner or for any purpose other than in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
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 Name <perfumesnatura.com> be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Dated: November 25, 2010