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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MA BOUTIQUE O NATUREL v. Privacy Administrator, Anonymize, Inc.

Case No. DCO2020-0063

1. The Parties

The Complainant is MA BOUTIQUE O NATUREL, France, represented by Inlex IP Expertise, France.

The Respondent is Privacy Administrator, Anonymize, Inc., United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <onatera.co> is registered with Epik, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2020. On October 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 2020, 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 October 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2020.

The Center appointed Andrew F. Christie as the sole panelist in this matter on November 11, 2020. 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 is a French company (société par actions simplifiée), which operates under the trade and brand name “Onatera”. It provides retail services for a wide range of natural and organic products, including vitamins, food supplements, dietary products, beauty products, essential oils and plant extracts. The Complainant says it has more than 20% of the market share of natural and well-being products in the online sector in France, and more than 350,000 customers per year. It offers delivery within many other countries, including Switzerland, most of the European Union territories, and the United States.

The Complainant owns several trademark registrations for the word trademark ONATERA, including French Registration No. 4246325 (registered on February 4, 2016) and International Registration No. 1318513 designating the European Union and Switzerland (registered on June 24, 2016).

The Complainant registered the domain name <onatera.com> on December 21, 2015, and uses it to resolve to the Complainant’s official website.

The disputed domain name was registered on July 9, 2020. The Complainant has provided screenshots taken on October 4, 2020, and October 5, 2020, showing the disputed domain name resolving to different randomly-generated web pages, including a parked page that have links to various other websites, and redirection to the Complainant’s official website at “www.onatera.com”.

On August 25, 2020, the Complainant’s representative transmitted by email a cease and desist letter to the Respondent, requesting that the disputed domain name be deactivated and either removed or transferred to the Complainant for free. On August 25, 2020, the Respondent sent an email to the Complainant’s representative stating “if you like the domain,you just pay 200 USD,i can transfer the domain to you”. When informed by the Complainant’s representative that the Complainant “will not pay for a domain name counterfeiting its trademark rights and clearly registered in the sole purpose of taking advantage of [the Complainant’s] activity and trademarks and disrupting its business”, the Respondent replied “200 usd not 2000, you consider it”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to a trademark in which the Complainant has rights because: (i) the disputed domain name identically reproduces the Complainant’s ONATERA trademark; (ii) the word “onatera” has no meaning in French or English and is therefore highly distinctive; and (iii) the addition of the country-code Top-Level Domain (“ccTLD”) “.co” is of no assistance in avoiding the likelihood of confusion and in fact reinforces the risk of confusion with the Complainant’s rights, as the disputed domain name is nearly identical to the Complainant’s domain name <onatera.com> which leads to the official website of the Complainant.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) the disputed domain name was registered anonymously, indicating that the Respondent is willing to hide its identity because it has no rights or legitimate interests in respect of the disputed domain name; (ii) neither the content of the website resolving from the disputed domain name nor the WhoIs details indicate that the name of the Respondent is “Onatera”, or that the Respondent is commonly known by the name “Onatera”, or that the disputed domain name is linked to an official registered company name “Onatera”, or that the Respondent has rights, including trademark rights, in the name “Onatera”; (iii) the Complainant’s representative sent a cease and desist letter to the owner of the disputed domain name requesting it to deactivate the disputed domain name, and to remove or transfer it, to which the Respondent replied offering to sell the disputed domain name to the Complainant without justifying any rights in the name “Onatera”; (iv) the Complainant has not authorized, licensed, or permitted the Respondent to use the name “Onatera” or any of its trademarks, or to apply for or use any domain name incorporating the Complainant’s trademarks, and there is no business relationship existing between the Complainant and the Respondent; and (v) the disputed domain name is neither used in connection with a bona fide offering of goods and services nor constitutes a legitimate noncommercial or fair use, as it randomly resolves to different websites, including to a parking page, infected and fraudulent websites, and redirection to the Complainant’s official website at “www.onatera.com”.

The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) it seems unlikely and implausible that the Respondent was unaware of the activities of the Complainant and of the existence of its ONATERA trademarks at the time of the registration of the disputed domain name, given that since 2015 the Complainant has become one of the e-commerce leaders in France for natural and organic products; (ii) the mere fact that the Respondent registered the disputed domain name, identically reproducing the Complainant’s ONATERA trademark, is in and of itself evidence of bad faith registration; (iii) the Respondent undoubtedly registered the disputed domain name precisely because it knew of the Complainant’s trademarks and activity, and was done with the intention to attract, for commercial gain, Internet users to the website associated with the disputed domain name by creating in their mind a confusion with the Complainant’s brands and activities under the name “Onatera”; (iv) consumers may believe that the disputed domain name is operated by, linked to, or affiliated with, the Complainant, which thereby disrupts the Complainant’s business and causes harm to the Complainant’s brand image; (v) the Respondent tried to sell the disputed domain name for valuable consideration in excess of its out-of-pocket expenses; (vi) the registrant’s concealment of its identity is also indicative of bad faith; and (vii) a mail exchange (“MX”) lookup conducted on the disputed domain name on October 4, 2020, revealed the existence of mail servers configured to operate with the disputed domain name, suggesting that the Respondent may be involved in a phishing scheme aiming to deceive Internet users and make them believe that they are dealing with the Complainant.

B. Respondent

Except for the prior Complaint communications between the Parties, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Once the ccTLD “.co” is ignored (which is appropriate in this case), the disputed domain name consists of the Complainant’s registered word trademark ONATERA in its entirety. Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its ONATERA trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The disputed domain name resolves to varying, randomly-generated web pages, including a parked page with links to various other websites, and redirection to the Complainant’s official website at “www.onatera.com”. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was registered several years after the Complainant first registered its ONATERA trademark. The evidence on the record provided by the Complainant with respect to the use of its trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s trademark. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant – a use which, according to paragraph 4(b)(iv) of the Policy, is evidence of registration and use of the disputed domain name in bad faith. In addition, the evidence also shows that the Respondent made an unsolicited offer to sell the disputed domain name to the Complainant for USD 200. This indicates that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant for a sum most likely in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name – a purpose which, according to paragraph 4(b)(i) of the Policy, is also evidence of registration and use of the disputed domain name in bad faith. For these reasons, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <onatera.co>, be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: November 25, 2020

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