Complainant is KIKO S.p.A., Italy, represented by Barzanò & Zanardo Milano S.p.A., Italy.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Blake Spencer, Canada.
The disputed domain name is <kikocosmeticshop.com> which is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2019. On June 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from those in the Complaint. The Center sent an email communication to Complainant on June 11, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 12, 2019.1
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on June 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2019. Respondent did not submit any response by such due date. Accordingly, the Center notified Respondent’s default on July 5, 2019. On July 10, 2019, the Center received an email communication from Respondent. On July 11, 2019, the Center informed the Parties that if they wished to explore settlement options, Complainant had to submit a request for suspension. On July 12, 2019, Complainant sent an email communication asking to continue with the proceeding. Respondent did not submit any further communication.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on July 12, 2019. This Panel finds that it was properly constituted. This 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.
Complainant is an Italian company, founded in 1997, active in the cosmetics field offering a wide range of products from make-up to skin care products.
Complainant has rights over (i) the KIKOCOSMETICS trademark for which it holds International registration No. 1018064, in class 3, registered on September 10, 2009; European Union Trade Mark registration number 008454126 in classes 3 and 35, registered on January 31, 2010, with the European Union Intellectual Property Office; and Canadian Trade Mark registration number TMA788154, in classes 3 and 35, registered on January 20, 2011, with the Canadian Intellectual Property Office; and (ii) the KIKO trademark for which it holds registration number 001141126 in class 3, registered on May 15, 2003, with the European Union Intellectual Property Office, and registration numbers 3650052 and 3689438 in class 3, registered on July 7, 2009 and September 29, 2009, respectively, both with the United States Patent and Trademark Office (the “Trademarks”).
The disputed domain name was registered on February 18, 2019. By the time the Complaint was filed, the website associated to the disputed domain name showed, among others, “Share and get $$$”, “Milk MAKEUP New Best Sellers Makeup Skincare Vibes”, “SEARCH OFFERS ACCOUNT”, a product bearing “Milk MAKEUP” followed by “Blur Liquid Matte Foundation Full coverage foundation $40”, a product bearing “Milk MAKEUP” followed by “Cooling Water Instant under-eye de-puffer. $24”, a product bearing “Milk MAKEUP” followed by “Eye Pigment Long-wear cream shadow $24”.
Complainant’s assertions may be summarized as follows.
Complainant has been active in the cosmetics field for more than 20 years, becoming one of the leading Italian professional cosmetic brands. Complainant has over 670 points of sale around the world, with presence in 34 nations, also having online e-commerce. Complainant is active on its official website “www.kikocosmetics.com” and on several social networks, such as Facebook, Twitter, Instagram and Youtube.
Complainant owns numerous trademarks registrations/applications having effects all over the world and domain names registered in several extensions (including <kikocosmetics.com>).
Due to its longstanding and worldwide use, the KIKO trademark is well-known. Previous UDRP decisions have recognized KIKO as a well-known trademark (KIKO S.P.A. v. Mohamed Guelzim, WIPO Case No. DMA2017-0003, and Kiko S.p.A. v. Li Si, Chen Hu, WIPO Case No. DCC2017-0011).
Pursuant to the WhoIs information, the registrant of the disputed domain name was Domains By Proxy, LLC. According to the information disclosed by the Registrar after the filing of the Complaint, the underlying registrant of the disputed domain name is indeed Blake Spencer. Domains By Proxy, LLC is a company providing registrants with anonymity shield in respect of registered domain names. The fact that the identity of the beneficial or underlying owner of a domain name is hidden by a privacy service compromises the expeditious, efficient and fair resolution of a case. The privacy service provided by Domains By Proxy, LLC is frequently used by cybersquatters to conceal their identity and in fact this company has figured as co‑respondent in many UDRP decisions. Therefore, both Domains By Proxy, LLC and Blake Spencer should be considered as respondents in the administrative proceeding.
The disputed domain name resolves to a website dedicated to Milk Makeup, organization indicated as part of the Milk Group Companies and linked to the websites “www.milkgroup.com” and “www.milk.xyz”. Milk Makeup is not an authorized seller of Complainant and is selling products in direct competition with Complainant. In the website linked to the disputed domain name Milk Makeup is promoting make-up products bearing the MILK trademark.
The disputed domain name is confusingly similar to the Trademarks. The disputed domain name entirely contains the Trademarks and, according to a well-consolidated principle, domain names that wholly incorporate a trademark are found to be confusingly similar for purposes of the Policy, despite the fact that they may also contain misspelling, descriptive or generic terms. The term “shop”, included in the disputed domain name at the end of the words “kiko” and “cosmetic”, is a generic term that recalls an online shop, impersonating one of Complainant’s possible official websites.
Respondent lacks rights and legitimate interests in respect of the disputed domain name.
Complainant’s internal policies exclude that dealers, agents, distributors, wholesalers or retailers are authorized to register and use KIKO or KIKOCOSMETICS as trademarks or in general as a distinctive sign. The website associated to the disputed domain name is dedicated to Milk Makeup, organization indicated as part of the Milk Group Companies, which are not authorized to use KIKO or KIKOCOSMETICS as trademarks or in general as a distinctive sign.
The disputed domain name is linked to a commercial website publishing third party’s make-up products with the MILK trademark, in direct competition with Complainant’s products. Respondent is therefore using the disputed domain name to create a likelihood of confusion with Complainant’s trademarks to intentionally attempt to attract, for commercial gain, Internet users to the MILK products promoted therein. Such conduct demonstrates that Respondent does not intend to use the disputed domain name in connection with any legitimate purpose and said use cannot be considered a legitimate noncommercial or fair use without intent for commercial gain.
Respondent is not commonly known by the disputed domain name. KIKO is and has been Complainant’s company name and trademark for decades. Respondent does not own “kiko” or “kikocosmetics” formative trademarks. The fact that “kiko” is a fanciful word strengthens the assumption that the disputed domain name was registered for the sole purpose of misleading potential consumers, to tarnish Complainant’s trademark and to prevent Complainant from reflecting its trademark in a corresponding domain name.
Respondent has registered and used the disputed domain name in bad faith.
The disputed domain name contains a well-known third party’s trademark without authorization. It is inconceivable that Respondent registered the disputed domain name without being aware of the existence of Complainant’s trademarks because KIKO is a well-known trademark and a fanciful word. That is reinforced by the fact that the disputed domain name entirely contains Complainant’s trademark and that it is directed to a website promoting make-up products of a third party, therefore demonstrating that Respondent is active in the beauty industry in which Complainant is a leader.
Bad faith is present where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. The disputed domain name resolves to a commercial website publishing third party’s make-up products bearing the MILK trademark, in competition with Complainant, creating a likelihood of confusion between MILK products and Complainant’s, therefore intentionally attempting to attract, for commercial gain, Internet users to MILK products promoted therein and therefore primarily for the purpose of disrupting the business of a competitor.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions in due time. However, as set forth above, on July 10, 2019, the Center received an informal email communication from Respondent, which in essence reads as follows: “[…] Few of my domains of my accounts were ran by Russian affiliates who hacked and took over the control of many domains […] His job was to use the website to promote e-commerce sales for our company […] he did not sell a single product from kikocosmeticshop.com and the site was never advertised or placed anywhere online […] We apologize for any inconvenience this may caused. It is possible for these kind of incidents can happen when running an online business […] As for the responsibility of your case, I will be responsible and settle with you by paying you the fees for his malicious activities that you are claiming […] Please allow us 6 months maximum until we can make that payment that you requested […] First priority is to make money with money. And then I will take responsibility for what my employee have done […]”.
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
As regards who is the proper Respondent in this case, pursuant to paragraph 1 of the Rules “Respondent means the holder of a domain-name registration against which a complaint is initiated”. The Complaint filed with the Center on June 6, 2019, named Registration Private, Domains By Proxy LLC as Respondent, as shown in the corresponding WhoIs report attached to the Complaint. At the Center’s request, the Registrar sent its registrar verification on June 7, 2019, disclosing Blake Spencer as the registrant of the disputed domain name, and thus on June 12, 2019, Complainant filed an amendment to the Complaint adding Blake Spencer as Respondent. Since the real underlying registrant has been promptly disclosed, this Panel decides to have Blake Spencer as the proper Respondent and thus further references to Respondent herein shall be understood to Blake Spencer.2
Respondent’s informal email communication received by the Center after the due date for the Response, referred to above, cannot be deemed as an official Response since it does not comply with the requirements set forth in the Rules, paragraph 5(c). The lack of Response from Respondent does not automatically result in a favorable decision for Complainant.3 The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
It is undisputed that Complainant has rights over the Trademarks.
Since the addition of a generic Top-Level Domain (“gTLD”) suffix after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a trademark.
The disputed domain name identically reflects the KIKOCOSMETICS trademark followed by the suffix “hop”. Albeit the combination of such trademark and said suffix renders the impression of the suffix being the word “shop”, it is clear to this Panel that such trademark is recognizable in the disputed domain name, and thus the addition of such a suffix in the disputed domain name does not avoid its confusing similarity with said trademark.
Thus this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
Complainant has alleged that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that Respondent (and the Milk Group) is not authorized to use the Trademarks, that Respondent is not commonly known by the disputed domain name, and that Respondent does not own any formative trademarks for “kiko” or “kikocosmetics”.
Respondent is using the website associated to the disputed domain name to offer products competing with Complainant’s (screenshots of the website associated to the disputed domain name attached as exhibits to the Complaint, see section 4 above). It seems that Respondent has used the disputed domain name for purposes of diverting Internet users from Complainant in order to attract consumers. Further, from those screenshots it appears that such website does not show any disclaimer as regards Complainant thus leading visitors to believe that the website reached from the disputed domain name is a site endorsed by, or at least somewhat associated with, Complainant. As established in prior UDRP cases, such use does not constitute a bona fide offering of products or services nor a legitimate noncommercial or fair use of the disputed domain name (see Microsoft Corporationv. Gioacchino Zerbo, WIPO Case No. D2005-0644; and LEGO Juris A/S v. Charlie Carmichael, WIPO Case No. D2010-1507). The Panel further notes that the nature of the disputed domain name carries a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0)
In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
Taking into consideration that Complainant’s registration and use of the Trademarks preceded the creation of the disputed domain name, and the content of the website associated to the disputed domain name, this Panel is of the view that Respondent should have been aware of the existence of the Trademarks at the time it obtained the registration of the disputed domain name.
The website linked to the disputed domain name was used to sell products competing with those of Complainant, which is enough for this Panel to establish Respondent’s bad faith for purposes of the Policy.4 There appears to be no disclaimer disassociating such website from Complainant, which also is indicative of bad faith (see Thomas Wuttke v. Sharing, WIPO Case No. D2011-1809). It seems to this Panel that in using the disputed domain name, Respondent has sought to create a likelihood of confusion with Complainant and the Trademarks as to the sponsorship, source, affiliation, or endorsement of the website and products offered therein, when in fact there is no such connection.
Thus the overall evidence in the file indicates that Respondent’s choice of the disputed domain name was deliberate with the intention to benefit from the reputation and goodwill of Complainant’s Trademarks, which denotes bad faith.
Further, the fact that Respondent has hidden its identity and contact information through a privacy or proxy service has been a further indicative of bad faith under several UDRP decisions (see section 3.6 of the WIPO Overview 3.0).
In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <kikocosmeticshop.com> be transferred to Complainant.
Date: July 26, 2019
1 The original Complaint was filed against Registration Private, Domains By Proxy, LLC, which appeared as registrant in the corresponding WhoIs report. The amendment to the Complaint named Blake Spencer as additional Respondent, as per the information disclosed by the Registrar.
2 The use of privacy service providers, the disclosure of underlying registrants and the determination of the proper respondent have been dealt with in several UDRP panel decisions. For instance, see The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services , WIPO Case No. D2007-1438; and Costco Wholesale Corporation and Costco Wholesale Membership, Inc., v. Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638. See also section 4.4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
3 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.” See also section 4.3 of the WIPO Overview 3.0.
4 See Loris Azzaro B.V. v. Domain Admin/PrivacyProtect.org and William Cortes de Sousa, REJ Comercio de Perfumes Ltda., WIPO Case No. D2013-2243: “the use of the disputed domain name for a website that is used to advertise or market products of Complainant’s competitors constitutes an improper use of Complainant’s trademark and is evidence of Respondent’s bad faith”. See Bartercard Ltd & Bartercard International Pty Ltd. v Ashton-Hall Computer Services, WIPO Case No. D2000-0177: “the Domain Name has been used to host a website offering competing products to those offered by the Complainant [...] this suggests that the Respondent registered the Domain Name with the primary intention of disrupting the business of a competitor [...] It also indicates that the Respondent has used the Domain Name to attract Internet users to its website for commercial gain by virtue of confusion with the Complainant’s mark [...] Under the Policy, both of these are sufficient to show registration and use of the Domain Name in bad faith.”
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