A. THE DOMAIN NAME IS CONFUSINGLY SIMILAR
The domain name cosmetics-esthederm.com (hereinafter referred to as the “disputed domain name”) incorporates the Complainant’s well-known, registered trademark ISTITUTE ESTHEDERM or at least its more distinctive part: ESTHEDERM. The addition of the gTLD “.com” does not add any distinctiveness to the disputed domain name.
Referring to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), as the term “ESTHEDERM” is distinctively recognizable in the disputed domain name, the disputed domain name should be considered identical or confusingly similar to the above listed Complainant’s trademarks. It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
B. RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST IN RESPECT OF THE DOMAIN NAME
The Complainant has never granted the Respondent any right to use ESTHEDERM trademarks within the disputed domain name, nor is the Respondent affiliated to the Complainant in any form. Furthermore the disputed domain name currently resolves to a parking page with links that are connected to the Complainant’s areas of activities.
The Complainant has not found that the Respondent is commonly known by the disputed domain name or that it has interest over the disputed domain name. When entering the terms ESTHEDERM in the Google search engine, the returned results all point to the Complainant and its business activity.
There is no evidence showing that the Respondent’s use of the disputed domain name is in connection with a bona fide offering of goods or services.
Taking into account of the above, the Respondent shall be considered as having no right nor legitimate interest in respect of the disputed domain name. According to the consistent case law of this Court, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. The Respondent in this case has chosen not to join the proceeding and therefore to stay silent on the fact and the merit of the case.
C. THE DOMAIN NAME WAS REGISTERED AND IS BEING USED IN BAD FAITH
It has to be highlighted that the Complainant’s trademarks predate the registration of the disputed domain name and the Respondent has never been authorized by the Complainant to use these trademarks nor to register the disputed domain name. The Respondent has chosen to incorporate the trademark ESTHEDERM in the disputed domain name with a descriptive additional element: cosmetics that exactly the area of business of the Complainant. From the Complainant’s perspective, it is very likely that the Respondent had the trademark in mind when he registered the disputed domain name and registered it only to mislead Internet users. The Respondent was in bad faith at the moment of the registration of the disputed domain name as well as in its use later on through a parking web site.
In fact the Respondent has also been using the domain name in bad faith : its website is linked to the disputed domain name and is redirected to site connected to the Complainant . Use of a disputed domain name to resolve to a webpage that offers links related to a complainant’s mark may be evidence of bad faith per Policy paragraph 4(b)(iv).
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Therefore, it is reasonable to conclude that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website to be redirected to website of others, connected to the same business of the Complainant and doing so caused a likelihood of confusion with the Complainant’s trademark.
SUMMARY
To summarize, 1) the trademark registrations for ISTITUTE ESTHEDERM predate the registration of the disputed domain name; 2) The Respondent bears no relationship with the trademarks or the Complainant; it is not commonly known by the disputed domain name nor that has it interest over the disputed domain name; 3) The Respondent has been using the disputed domain name with the likely intention to take advantage of the trademark and to start a web parking activity connected to the Complainant’s business. Consequently, the Respondent should be considered to have registered and use the disputed domain name identical to the Complainant in bad faith. The Respondent has no legitimate right or interest of using the disputed domain name.
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