Decision for dispute CAC-UDRP-104121

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant relies upon various registered trade marks around the world that comprise or incorporate the term "Cosmoprof". They include:

- European Union trade mark registration No. 001050483, for COSMOPROF as a word mark, filed on 22 January 1999 and registered on 12 January 2001 in classes 35, 41, 42; and

- European Union trade mark Registration No. 002392504, for COSMOPROF as a word mark, filed on 28 September 2001 and registered on 7 July 2009, in class 16.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant claims to be the licensee of several trade mark registrations for the sign “Cosmoprof”, including the trade marks identified above.

The Complainant in the present proceedings is BolognaFiere Cosmoprof S.p.A., an Italian company, part of the Group Fiere Internazionali di Bologna S.p.A. - Bolognafiere or, in abbreviated form, Bolognafiere S.p.A., with registered office in viale della Fiera, 20, 40127, Bologna, holder of the relied upon trade marks.

Cosmoprof by BolognaFiere Cosmoprof is the most important trade fair in the world, encompassing all the core players of the beauty industry, from raw materials to finished products. Over the course of the 50 years since its beginning, the success and expectations for the event have steadily increased.

Today, Cosmoprof is a vast global phenomenon, made of: 5 Cosmoprof worldwide branded shows, 25 international beauty events, 54 years of know-how in the beauty trade shows business, 3 digital events, +10.000 exhibitors involved, 190 Countries of origin, +500.000 professionals engaged and 80 USD mln of total revenues in 2018.

The Complainant has registered many domain names, comprising the trade mark “Cosmoprof”, under several different TLDs

The Respondent registered the domain name <cosmoprof-middleeast.com> (the "Domain Name") on 14 July 2021.

At the date of the Complaint the website related to the Domain Name was active and redirected to a “parked page” where is shown a directory with different related searches, as “Listing Product Online”, “Exhibition Trade Shows”; “Expo Events”; “Beauty Trade Shows 2021”, “Saudi Arab” and “Map”.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The Complainant has satisfied the Panel that it is the licensee of registered trade mark rights in the term COSMOPROF. Not only is this asserted without dispute, it is inherently likely to be correct in circumstances where another company in the group of companies to which the Complainant belongs, is the registered owner of those marks and the Complainant's corporate name includes the relevant term. An affiliate licensee is generally considered to hold sufficient rights in a trade mark for the purposes of the UDRP; as to which see section 1.4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the "WIPO Overview 3.0").

In order to satisfy the first element of the Policy it is usually sufficient for a complainant to show that the relevant mark is “recognizable within the disputed domain name”; (section 1.7 of the WIPO Overview 3.0). The Domain Name can only sensibly be read as the term “Cosmoprof" in combination with the words "Middle East" and the “.com” generic Top-Level Domain. The marks relied upon by the Complainant are therefore clearly recognisable in the Domain Name.

The Complainant has, therefore, satisfied the Panel that the Domain Name is confusingly similar to trade marks in which it has rights and has thereby made out the requirements of paragraph 4(a)(i) of the Policy.

The Panel is further satisfied that that the Domain Name deliberately, impermissibly and falsely impersonates the Complainant and its business in that it comprises the COSMOPROF term combined with a geographic term and without any additional distinguishing element. There are no rights in legitimate interest in a domain name that so impersonates the mark and business of another person and the registration and holding of such a domain name is registration and use in bad faith (see in this respect Johnson & Johnson v. Ebubekir Ozdogan WIPO Case No. D2015-1031).

Further and in any event the Panel is persuaded that the Domain Name was registered and has been held and used for the purposes of using the reputation of the COSMOPROF mark to draw internet users to a domain name parking page with a view to displaying links, inter alia, for trade shows for commercial gain. Again there is no right or legitimate interest in such a registration (see section 2.9 of the WIPO Overview 3.0). Further the registration and use of a domain name for such a purpose is registration and use in bad faith, falling within the example of circumstances indicating bad faith set out in paragraph 4(b)(iv) of the Policy (see also section 3.5 of the WIPO Overview).

The Complainant has, therefore, made out the requirements of paragraph 4(a)(ii) and (iii) of the Policy.