The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
Bad faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a Panel to be evidence of bad faith registration and use of a domain name. It provides that: “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:
(i) circumstances indicating that the Respondent has registered or the Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.”
The INSTITUT ESTHEDERM PARIS trademarks predate the disputed domain name.
There is no doubt that the Respondent was well aware of the INSTITUT ESTHEDERM PARIS trademarks when it registered the disputed domain name.
The Respondent was planning to target internet users and potential consumers of the Complainant. This is why it registered a domain name incorporating the distinctive term ESTHEDERM, adding the generic term “beauty”, and used it immediately after it was registered to give access to the litigious website www.esthedermbeauty.com.
The Panel finds that the Complainant has made a prima facie case that the Respondent registered the disputed domain name in bad faith.
With regard to the bad faith use, the disputed domain name was immediately used to resolve to a website offering INSTITUT ESTHEDERM PARIS branded cosmetics, providing a content related to the Complainant, using products’ images without any authorization, whereas, on the bottom of the website it offers unrelated “partner products”.
The Panel is of the opinion that this use satisfies the requirement of paragraph (4)(b)(iv) of the policy “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
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