The Complainant is Coty Deutschland GmbH of Mainz, Germany, represented by Boult Wade Tennant, United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent, as provided by the contact information furnished by the Registrar, is PrivacyProtect.org of Nobby Beach, Queensland, Australia; Mr. Domain Admin of Ambergris Caye, Belize, represented by Leslie Wilson, UK.
Further discussion concerning the identity of the owner of the disputed domain name is set forth in sections 3, 5, and 6.B below.
The disputed domain name <rimmel.com> is registered with Imperial Registrations, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2013. On November 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 19, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 22, 2013.
The Center verified that the amended Complaint (referred to in this Decision as 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 November 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2013.
On November 28, 2013, the Center received a phone call from “Mr. Wilson” (apparently representative of Respondent Mr. Domain Admin). The telephone number of this Mr. Wilson matches the number provided by the Respondent’s representative in the Response.
A Response was filed with the Center on December 15, 2013 by Leslie Wilson on behalf of one Tom Marks.
On December 17, 2013, the Center sent an email communication to the Registrar concerning the fact that the public information in the Whois database now indicated that Tom Marks of London, UK, was the registrant of the disputed domain name. Despite the Center’s several email reminders to the Registrar on December 18, 19, 20, and 30, 2013 and January 3, 2014, and the ten messages left in the Registrar’s voicemail, no reply was received from the Registrar.
On December 30, 2013 the Center received an email communication from Complainant. On January 7, 2014 the Center received an email communication from Respondent.
The Center appointed Richard G. Lyon as the sole panelist in this matter on January 10, 2014. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On January 16, 2014, the Panel issued the Procedural Order No. 1, requesting further information from the Respondent. The Respondent transmitted its supplemental response by email dated January 20, 2014.
The Panel finds the following factual matters to be undisputed or established by the parties’ evidence. Certain contested facts are included in sections 5 and 6 below.
The Complainant manufactures and markets, as relevant to this dispute, toiletries, cosmetics, soap, and perfumes. Among its products is a line of women’s beauty products branded RIMMEL. Complainant holds many trademarks around the world for RIMMEL in beauty-related product lines, the earliest of which dates back to the nineteenth century. The Complainant actively markets its Rimmel products; its principal website is “www.rimmellondon.com”.
The disputed domain name was originally created in 1997. According to the Internet Archive since that date the disputed domain name was used briefly in 2005 for pay-per-click links to beauty-related products, and in 2005 for a domain name-related business called “Name Magic”, but almost always yielded a blank page or simple Google search bar.
The Complainant contends as follows:
1. The disputed domain name is identical to the Complainant’s many registered trademarks for RIMMEL.
2. The originally named registrant of the disputed domain name, Privacy Protect.org, is a privacy service that has disclaimed ownership of the disputed domain name and thus has no right or legitimate interest in it. The Complainant has never authorized any of the persons or entities named as the Respondent to use its RIMMEL marks, and none of them has ever been commonly known by the word “Rimmel”. “There has been no real use” of the disputed domain name for an active website and thus any Respondent has no rights or legitimate interests in it.
3. Bad faith is proven under paragraphs 4(b)(iii) and possibly 4(b)(ii) of the Policy.1 As to paragraph 4((b)(iii), the Respondent’s ownership of the disputed domain name “is causing the Complainant difficulty and preventing the simplest way of expanding their [sic] business,” namely by using its brand name for a domain. As to paragraph 4(b)(ii), the Complainant “[has] reason to believe” that the “true owner” of the disputed domain name is Peter Colman, who is a serial cybersquatter, having been found in several decisions to have registered domain names incorporating the trademarks of others.2 Mr. Colman’s conduct satisfies the “pattern” proviso in paragraph 4(b)(ii) of the Policy.
In addition, the Respondent’s long non-use of the disputed domain name establishes bad faith in registration and use under the doctrine first set out in Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Complainant’s marks are “extremely well known” throughout the world. The Respondent has actively sought to hide its identity and may have furnished false contact information to the Registrar. As in the Telstra case, “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
The Respondent contends as follows:
1. Mr. Thomas Marks is the current owner of the disputed domain name, having acquired it in 2007 in order to develop a fan site for “the well known cinematography grip Kurt Rimmel.” Alternatively, “Before any notification of the dispute, the respondent can give a clear concise intended use of the domain, which has nothing to do with cosmetics or any trademark clause of the complainant. The domain was purchased with many others in good faith with the intention of offering a matched email address service business. I.E If your name was Kurt Rimmel you could rent the email address rimmel, so your email address would be Kurt@rimmel.com. You had access to the email address only. This business demonstrates a legitimate business use.”
2. The Complainant has suffered no disruption to its business. Its principal website has always been “www.rimmellondon.com”.
3. The Complaint should be barred by laches. The disputed domain name has been put to almost no use for the sixteen years of its existence and the Complainant took no action, apparently preferring <rimmellondon.com> for its website and advertising.
4. As “a larger company using bully tactics in an attempt at a reverse domain name hijacking.” (Emphasis in original).
While there have been a few recent cases urging the adoption of a laches defense in a Policy proceeding, no such defense is expressly or impliedly included in the Policy or the Rules. As stated in Alimak Hek, Inc. v. Richard Wheat, WIPO Case No. D2011-1344, this Panel is firmly of the view, supported by longtime Policy precedent to the point of inclusion in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.10, “that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements.” The passage of time, without more, does not make out a defense. Opera National de Paris v. Vertical Axis Inc., WIPO Case No. D2013-0874.
As the WIPO Overview 2.0, paragraph 4.10, continues, however: “a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith.”
The express Policy requirements set forth in paragraph 4(a) are the place to consider the passage of time between registration of the disputed domain name and the filing of the Complaint. See Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011. The Panel will do so in section E below.
The Registrar identified the “privacy service” and “Mr. Domain Admin” as the registrant. The Center noted that shortly after the filing of the Complaint the public Whois database indicated “Mr. Tom Marks” as the Respondent, and the Response was submitted on behalf of “Mr. Marks”. The Complainant in its December 30, 2013, email to the Center questioned the very existence of “Mr. Marks” and requested the Panel to exercise its prerogative under paragraph 12 of the Rules3 to “request documents confirming both the identity of Mr. Marks and his standing to make submissions in this case.”
The Complainant also states that it “[has] reason to believe” that the “true owner” of the disputed domain name is Peter Colman. The Complainant provides as Annexes to the Complaint the following evidence in support of this belief:
In Thames Water Plc. v. Thames Water Meter Company Ltd., WIPO Case No. D2002-1071, involving a different domain name, Peter Colman is identified as the owner of the <rimmel.com>.
In a prominent business networking media site Peter Colman identifies himself as CEO of <committed.com>, an entity that is related to the disputed domain name.
The Panel confirmed these references and in addition noted that the most recent Whois information identifies an email address at “www.cherished.com”, of which Mr. Colman claims to be CEO, for the registrant and his technical and administrative contact.
Based upon the foregoing, the Panel issued Procedural Order No. 1, requesting:
“that the Respondent, whether Mr. Domain Admin or Tom Marks, reply to the following questions:
1. Does the Respondent now have, or at any time has had, any business relationship, formal or informal, oral or in writing, with Mr. Peter Colman?
2. If the answer to question 1 is anything other than an unqualified “None,” please set forth the nature of the relationship including dates in which it was in effect. If the relationship is set worth in a writing (whether in hard copy or electronic form), please attach a copy of the document to the answer to this question 2.
The Panel would prefer that the answers to these questions be made under penalty of perjury by a person with personal knowledge of the facts, preferably Mr. Tom Marks.”
Immediately prior to the Panel’s deadline the Respondent submitted a statement, not on oath or otherwise under penalty of perjury, signed by Tom Marks, that provided in pertinent part: “I can confirm that I have at no time had any business relationship either formal or informal, oral or in writing with Mr. Peter Colman.”
Based upon the available evidence, the Panel will not treat Peter Colman as the Respondent. The Respondent’s reply to Procedural Order No. 1, while not dispelling all doubt, must be taken into account. Even if that statement be ignored completely, there is not enough in the case file, or the public records the Panel could consider, to raise more than a possibility of Mr. Colman’s connection to this proceeding or the disputed domain name. The Registrar both in its reply to the Center and subsequently in its Whois database does not identify Mr. Colman. A preponderance of the evidence is necessary for concluding otherwise, and that does not exist.
While the Panel discusses Mr. Domain Admin and Tom Marks separately in section E, he concludes that the same result on the merits obtains whichever of these (or indeed anyone but a repeat Policy offender) is the actual or beneficial owner of the disputed domain name.
The disputed domain name is identical to the Complainant’s RIMMEL marks, and the Complainant’s evidence demonstrates beyond doubt that it has rights in those marks sufficient to invoke the Policy. The Complainant has met this Policy requirement.
The Complainant has made its prima facie case that the Respondent lacks rights in the disputed domain name by asserting without contradiction that it has never authorized the Respondent to use its RIMMEL marks and that the Respondent has never been commonly known by the word “Rimmel”. The burden of production thus shifts to the Respondent to show the contrary.
The Respondent has not provided any evidence “demonstra[ting] preparations”4 to use the disputed domain name for a Kurt Rimmel fan site. The only evidence offered is a one-paragraph memorandum bearing a date in 2006 that, even if genuine, demonstrates only an intention so to use the disputed domain name, and an intention is not enough. Policy, paragraph 4(c)(i); CVS Pharmacy, Inc. v. Top Investments, LLLP, WIPO Case No. D2011-0379. The Name Magic business may have been entirely legitimate in the everyday sense, but that is not the inquiry under the Policy. Rather the Panel must determine whether the registrant is entitled to use the trademark of another for its business, and the Respondent presents no evidence as to why that should be. And in any event the Panel finds the evidence of this business offered by the Respondent – a single screen shot and an unsworn, unsupported statement of its representative as to the nature of the business – falls well below the bar required to show that such business was conducted in the manner asserted in the Response.
The Complainant has met this Policy requirement regardless of which person or entity is deemed the owner of the disputed domain name.
The Complainant advances three bases for finding bad faith in registration and use of the disputed domain name.
1. The Complainant’s argument that paragraph 4(b)(iii) of the Policy condemns the Respondent’s conduct fails for two reasons. First, the Complainant does not assert and the record does not support a necessary element of that clause, that the Respondent be a competitor of the Complainant. Second, and more importantly, the “disruption” claimed to occur is no more than a consequence of the first-come, first-served principle underlying domain name registration. Any business is arguably “disrupted” to some extent when it cannot register one of its brands as a .com domain name. To the extent this makes out evidence of bad faith is expressly addressed in another example of evidence of bad faith expressly included in the Policy, paragraph 4(b)(ii), to which the Panel now turns.
2. It is under paragraph 4(b)(ii) that the identity of the Respondent may matter to the Panel’s analysis. That clause includes a proviso to its applicability, that the Respondent “have engaged in a pattern of such conduct.” There is no allegation or evidence to the effect that Mr. Domain Admin or Mr. Marks has been a part of serial registration of the domain names that incorporate the trademarks of others. Not so Peter Colman, who has been found to have done so in four reported Policy decisions, one of which listed many other domain names that he owned (including the disputed domain name in this case) that appeared to replicate third party trademarks. But as discussed in section B above, the Panel finds the evidence insufficient to conclude that Mr. Colman is behind this registration.
3. The Complainant’s final and strongest argument for finding bad faith relies upon the early and often-cited decision in Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The panel in Telstra concluded that in the circumstances of that case non-use of a domain name was evidence of registration and use in bad faith for purposes of paragraph 4(a)(iii) of the Policy. The circumstances he relied upon were:
“(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
Factors (iii) and (iv) above obtain in this proceeding. The fog and confusion surrounding ownership of the disputed domain name, information the Respondent’s own case concedes is inaccurate,5 and possible cyberflight at the very least suggest that the Respondent has something to hide. Factors (ii) and (v) do not precisely match the Telstra facts, as the Respondent has stated, with some (albeit thin) evidence, that the disputed domain name was acquired, with many others, to establish a surname-based email service, a use that might be deemed legitimate.6
The determinative differences between this case and Telstra, however, relate to the first factor. The Respondent in Telstra resided in Australia, and the panel, a professor at an Australian law school, found the domain name at issue was found by to be “widely known” there as the principal brand of the nation’s dominant telecom provider. The same cannot be said of the disputed domain name in this case. Though long a brand and registered trademark, Rimmel has not achieved the same sort of everyday recognition even in its home country, the UK. The Panel simply cannot say that anyone registering the disputed domain name in 1997, or in 2007 when Mr. Marks claims (without evidence) to have acquired it, did so with knowledge of the Complainant or the Rimmel mark, or did so eventually to monetize whatever goodwill attached to the mark, two items that are ordinarily necessary to establish registration in bad faith. The passage of sixteen years (or six years, if based on a 2007 acquisition) undercuts any such implication. Failure to spring the trap after so long a hibernation suggests that it might not have been a trap in the first place – a suggestion that appears equally likely to this Panel as the contrary implication urged by the Complainant. Because of this the Panel finds that the Complainant has failed to prove registration or use in bad faith under the Telstra doctrine.
The Panel is troubled by the possible cyberflight, concealed identity, unexplained ownership transfers, and incomplete information furnished to the Registrar. Such monkey business does, as the Complainant asserts, raise a suspicion that the Respondent has been less than candid with the Panel, and that the omissions are material to this dispute. The Policy, however, requires the Panel to act on the evidence, not suspicion or suggestion.
This is not to fault the Complainant for failure properly to support its charges; on the contrary, the Complainant has done a thorough and commendable job of scouring the public record for proof. With no power to compel testimonial or documentary evidence and under a Policy and Rules that in the interest of an expedited procedure for a limited class of disputes severely limit the ability of parties and the Panel to investigate, however, this Panel believes that anything beyond what was requested in Procedural Order No. 1 would exceed his limited brief under the Policy.7
As recently noted in another UDRP decision involving a frequent respondent,8 the UDRP is not appropriate even for all domain name disputes. The Complainant is not without recourse, as Mr. Marks has provided an address in the UK, and the Registrar is located in the US. The courts in those jurisdictions allow disclosure and discovery that should enable the Complainant, should it choose to do so, to probe further into the ownership of the disputed domain name.
Nothing in this proceeding supports a finding of RDNH. It should be clear from the foregoing discussion that this was not a frivolous Complaint. And RDNH is always discretionary with the Panel. The Respondent’s conduct referred to above as monkey business provides an independent reason for denying RDNH.
For the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Sole Panelist
Date: January 20, 2014
1 Paragraph 4(b) of the Policy reads: “For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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;”
2 The Panel discusses the evidence proffered in support of this belief in Section 6.B below.
3 “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.”
4 Policy, paragraph 4(c)(i) [emphasis supplied]: “ . . . Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(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.”
5 For example, the Respondent asserts that Mr. Marks acquired the disputed domain name in 2007. Not until 2013 was Mr. Marks included in the Registrar’s database.
6 Then again it might not be. Compare panel and dissenting opinions in Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986.
7 It is for this reason that the Panel did not invite the Complainant to reply to the Respondent’s statement made in response to the Procedural Order. The Panel assumed that the Complainant had already submitted everything it could find regarding Mr. Colman, and that any additional inquiry on the Panel’s part was not appropriate.
8 Bulbs 4 East Side Inc., d/b/a Just Bulbs v. Fundacion Private Whois/ Gregory Ricks, WIPO Case No. D2013-1779.