Decision for dispute CAC-UDRP-108868

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 is the current registered proprietor of the following NOTINO-formative EU trademarks:

• EUTM No. 015221815 – NOTINO (word), registered on 28 June 2016;
• EUTM No. 015944127 – NOTINO TODAY IS YOURS (figurative), registered on 27 January 2017;
• EUTM No. 016743965 – NOTINO TRY&BUY (word), registered on 18 September 2017;
• EUTM No. 016804049 – NOTINO TRY&BUY (figurative), registered on 3 October 2017;
• EUTM No. 017471574 – NOTINO (word), registered on 9 March 2018;
• EUTM No. 018071749 – NOTINO (figurative), registered on 11 September 2019;
• EUTM No. 018537464 – NOTINO (figurative), registered on 11 December 2021; and
• EUTM No. 018537465 – NOTINO (word), registered on 11 December 2021.

The NOTINO marks are well known throughout the EU and beyond. The Complainant operates a network of country-coded e-shops (<notino.cz>, <notino.sk>, <notino.pl>, <notino.it>, <notino.dk>, <notino.ro>, <notino.hr>, <notino.es> and others) that achieved turnover in excess of EUR 1 billion in the financial year 2022, making it the largest pure e-commerce beauty reseller in Europe. It is not plausible that the Respondent chose the strings "notimstore-hr", "notinstorepl" and "notshopitaly" without knowledge of NOTINO. 

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.
No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed 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 disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

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).

CONSOLIDATION OF THE PROCEEDINGS

According to Paragraph 4(a) of the Policy, a complainant is required to prove each of the following three elements for obtaining an order that a domain name should be transferred or cancelled:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The Panel has examined the evidence available to it and has come to the following conclusion concerning the satisfaction of the three elements of paragraph 4(a) of the Policy in these proceedings:

EARLIER RIGHTS

The disputed domain names are confusingly similar to the Complainant's Trademark NOTINO. This finding is based on a well-established practice in evaluating the existence of a likelihood of confusion:

1) Disregarding the top-level suffix in the domain name (i.e. “.com” or “.shop”, which are in use for the disputed domain names); and

2) Holding that the addition or omission of single letters to simulate typographical errors to or from distinctive names and trademarks or the addition of generic or geographical terms do not prevent a likelihood of confusion from arising. The disputed domain names are:

<notimstore-hr.com>

<notinstorepl.shop>

<notshopitaly.com>

The domain name <notinstorepl.shop> consists of an almost identical reproduction of the Complainant’s trademark NOTINO together with the descriptive word “store” and the geographic abbreviation “pl” for Poland. Neither the descriptive word nor the geographic abbreviation is sufficient to prevent a likelihood of confusion from arising.

The domain name <notimstore-hr.com> consists of the elements “notim”, “store” and “hr”. The element “notim” is an obvious misspelling of the Complainant’s NOTINO trademark. It differs from NOTINO only by substituting the letter “m” for the letter “n” and omitting the final letter “o”. The letters “m” and “n” are adjacent on a standard QWERTY keyboard, making this a classic example of typo-squatting. The term “notim” has no independent meaning in English, Croatian, Czech or any other language relevant to this proceeding and would naturally be understood by Internet users as a misspelled version of NOTINO. The suffix “hr” corresponds to Croatia and mirrors the country identifier used by the Complainant for its Croatian market operations under the NOTINO brand. Again, these additions are not sufficient to prevent a likelihood of confusion from arising.

The final domain name <notshopitaly.com> shares the least obvious similarity to the NOTINO brand. However, the assessment in this case should not be conducted in a vacuum. Instead, in appropriate cases, panels may consider the broader circumstances surrounding a disputed domain name when assessing confusing similarity, particularly where the domain name is a borderline candidate for such a finding. Those circumstances are present here. The disputed domain name resolves to a cosmetics and beauty-products e-shop that trades on the Complainant’s reputation and commercial presentation. It is part of a coordinated pattern of three domain names targeting the Complainant through variations of the NOTINO mark combined with retail-related and geographic terms. In these circumstances, Internet users are likely to perceive the disputed domain name as referring to an Italian online store connected with the Complainant’s NOTINO business.

The NOTINO trademark therefore remains recognizable within each of the disputed domain names, and the Panel concludes that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

NO RIGHTS OR LEGITIMATE INTERESTS

The onus to make out a prima facie case that the Respondent lacks rights or legitimate interests is placed on the Complainant. However, once such a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in a domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant has put forward that the Respondent has not used, and made no demonstrable preparations to use, the disputed domain names in connection with any bona fide offering of goods or services. Instead, the websites to which the disputed domain names resolve are e-shops selling cosmetics, perfumes and related beauty products - the same goods sold by the Complainant under the NOTINO marks - trading off the Complainant’s mark and get-up. This is not bona fide use.

The Respondent is not commonly known by the disputed domain names. The WHOIS records for all three domains are redacted behind a privacy service operated by the Registrar. The Complainant has never authorized, licensed or otherwise permitted the Respondent to use the NOTINO trademark or to register any domain name incorporating it.

The use is neither non-commercial nor fair: the disputed domain names host commercial e-shops trading on the NOTINO mark.

Since the Respondent has undertaken no steps to rebut the Complainant’s contentions, the Panel concludes that the Respondent did not establish any right or legitimate interest to the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy). The Complainant has therefore also satisfied the requirement under paragraph 4(a)(ii) of the Policy.

BAD FAITH

The Panel finds that the Complainant has established that the disputed domain names were registered by the Respondent and are being used by the Respondent in bad faith. For this purpose, the Complainant has successfully put forward prima facie evidence that the Respondent has not made use, or demonstrable preparations to use, of either the disputed domain names in connection with a bona fide offering of goods or services, or of making a legitimate non-commercial or fair use of the disputed domain names.

The Respondent clearly knew, or should have known, of the Complainant and its NOTINO trademarks. The NOTINO marks are well known throughout the EU and beyond. The Complainant is the largest pure e-commerce beauty reseller in Europe. It is not plausible that the Respondent chose the strings "notimstore-hr", "notinstorepl" and "notshopitaly" without knowledge of NOTINO. Even a most basic online search would have revealed the Complainant, its marks, its stores and its offering.

Each disputed domain name combines a variation of NOTINO with the descriptive term "store" or "shop" and the country identifier of a market in which the Complainant operates (Croatia, Poland, Italy). This is precisely the composition the Complainant uses for its own local storefronts. It is unlikely that this choice could be coincidental.

The Respondent operates e-shops selling the same category of goods (cosmetics, perfumes and beauty products) protected under the Complainant's marks in classes 3 and 35. CAC panels have held that operating an imitation e-shop under a NOTINO-formative domain amounts to registration and use in bad faith.

The Complainant has been repeatedly targeted by NOTINO-formative registrations that have been transferred by CAC panels, including CAC-UDRP-103754 (<notino.art>, <inontino.com>, <i-notino.site>, <notino-tester.site>), CAC-UDRP-103850 (<notinos.club>), CAC-UDRP-105494 (<notino.ltd>), CAC-UDRP-106446 (<notinosamplesale.shop>, <notinoperfume.shop>), and CAC-UDRP-106526 (<notinoonline.shop>). The registration of three further NOTINO-formative typo squatted domains, targeting three distinct national markets of the Complainant, is a continuation of that pattern (Policy, paragraph 4(b)(ii)).

The Respondent's identity has been concealed behind the Registrar's WHOIS redaction. Concealment of the true registrant, when combined with the other indicators above, further supports bad faith (WIPO Overview 3.0, section 3.6; CAC-UDRP-105494 (<notino.ltd>)).

The Panel therefore concludes that the Respondent has registered and is using the disputed domain names in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy). The Complainant has therefore also satisfied the requirement under paragraph 4(a)(iii) of the Policy.