Elemis USA, Inc. v Super Privacy Service LTD c/o Dynadot / stevestrievel

WIPO Case No. D2022-2933

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Elemis USA, Inc. v. Super Privacy Service LTD c/o Dynadot / stevestrievel

Case No. D2022-2933

1. The Parties

The Complainant is Elemis USA, Inc., United States of America (“United States”), represented by

Strategic IP Information Pte Ltd., Singapore.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States / stevestrievel, China.

2. The Domain Name and Registrar

The disputed domain name <elemiscn.com> (the “Domain Name”) is registered with Dynadot, LLC

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2022.

On August 9, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 10, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 10, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 12, 2022.

The Center verified that the Complaint together with the amended 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 the Respondent of the paragraph 5, the due date for Response was September 6, 2022. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on September 7, 2022.

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The Center appointed Willem J. H. Leppink as the sole panelist in this matter on September 14, 2022. The
Panel finds that it was properly constituted. The 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.

4. Factual Background

The Complainant is a British skincare company. The Complainant has been in business since 1989 and was founded in London, United Kingdom, by entrepreneur Linda Steiner. The Complainant produces and sells skincare in over 45 countries worldwide and uses the domain name <elemis.com> as the portal site for its

official websites. The Complainant’s local websites are accessible via URLs in which the domain name is

preceded by the respective country code such as <us.elemis.com>, <uk.elemis.com>, <fr.elemis.com>

The Complainant is the owner of several trademark registrations comprising of the word element ELEMIS, the International Registration for the trademark ELEMIS (word mark), with registration No. 778031 and with registration date of March 26, 2002, for goods in class 3, designating inter alia various European countries, as well as Singapore and Mexico. These two trademark registrations will together in singular be referred to

including, but not limited to the European Union trademark, ELEMIS (word mark), with registration

as the “ELEMIS Trademark”.

The Domain Name was registered on March 18, 2022. The Domain Name resolved to a website

(the “Website”), displaying the ELEMIS Trademark and promoting and selling ELEMIS skincare at heavily

discounted prices.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

The Domain Name is identical or at least confusingly similar to the Trademark. More specifically, the
Domain Name consists of the ELEMIS Trademark in its entirety.

The Respondent cannot have any rights or legitimate interests in regard to the Domain Name. The Domain Name simply copies the ELEMIS Trademark in which the Complainant has rights and is not authorized to do so. In addition to this, the Respondent uses the Website to which the Domain Name resolves to offer for

sale products from the ELEMIS Trademark at discounted prices. Thus, the Respondent is relying heavily on
the false and misleading assumption that the Website is associated with or endorsed by the Complainant.

Such use cannot constitute a bona fide offering of goods and services.

Furthermore, the Domain Name has been registered and used in bad faith. The Respondent registered the
Domain Name with prior knowledge of the ELEMIS Trademark. Whereas, the Respondent is intentionally
using the Domain Name, to redirect Internet users to the Website, for commercial gain, on which the

Respondent offers and advertises goods from the ELEMIS Trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(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.

A. Identical or Confusingly Similar

The Complainant has proven to have rights in the Trademark.

The Domain Name consists of the Trademark in its entirety, followed by the two letters “cn”, which is the

usual country code for China.

As set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 1.8, the addition of other terms, such as a geographical term would not

prevent a finding that a domain name is confusingly similar to the relevant trademark for purposes of the first
element.

The Trademark is clearly recognizable in the Domain Name and the addition of the letters “cn” does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s Trademark.

Accordingly, the Panel finds that the Complainant satisfied the requirement under paragraph 4(a)(i) of the

Policy.

B. Rights or Legitimate Interests

The Complainant in its Complaint has established a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name.

Additionally, the Panel could not find any evidence by referring to the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel may conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:

(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection

with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the Domain Name (as an individual, business, or other organization) even if

the Respondent has not acquired any trademark or service mark rights; or

(iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to
misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The prima facie case presented by the Complainant is enough to shift the burden or production to the Respondent to demonstrate that it has rights or legitimate interest in the Domain Name. However, the Respondent has not presented evidence of any rights or legitimate interest it may have in the Domain Name,

and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in
front of it.

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In more detail, the Complainant asserted that the Respondent registered the Domain Name without receiving prior authorization from the Complainant. In addition to this, the Respondent has not used or made preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.

To the contrary, the Respondent uses the Website to offer products for sale at heavily discounted prices under the ELEMIS Trademark. The Complainant asserted that by doing so the Respondent is, thus, intentionally and misleadingly diverting consumers to its own Website for commercial gain.

Certainly lacking a Response, the Panel finds that the Website creates the impression of being an official website affiliated with the Complainant. The Website can even be regarded as an impersonation of the

Complainant as the Website includes the text “the official website of the ELEMIS online mall”. In accordance

with WIPO Overview 3.0, section 2.5.1 the use of the Domain Name can thus not constitute fair use as it
effectively impersonates or suggests endorsement by the Complainant.

The Complainant has not alleged that the products offered for sale on the Website are genuine or counterfeit. Nonetheless, even if the products are not counterfeit and the Respondent considers itself to be

a reseller or distributor of the Complainant’s products, the Respondent has not satisfied all of the

requirements set forth in the so-called “Oki Data test” (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case

No. D2001-0903). Whereas, the Website does not accurately and prominently disclose the Respondent’s

relationship with the Complainant. To the contrary, as set out before the Website creates the impression of

being an official website of the Complainant and also the copyright notice mentioned on the Website refers to

“Elemis Online Store”

Hence, the Respondent’s use cannot be considered as legitimate noncommercial or fair use of the Domain

Name either.

The Panel, therefore, finds that the second element has been satisfied.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent has registered and used the Domain Name in bad faith and refers to its consideration under section 6.B. above.

In light of the evidence filed by the Complainant, the Panel finds that the ELEMIS Trademark and the

Complainant’s activities are well known. The Complainant is owner of numerous trademarks, which were

used and registered many years before the Domain Name was registered. Furthermore, the Complainant is
active in over 45 countries and has grown to be a renowned skincare brand winning multiple international
prices for her skincare products.

In addition to this, the Panel considers the fact that for its official website the Complainant uses the domain name <us.elemis.com> for the offering of ELEMIS products. The Domain Name is almost identical to the

Complainant’s domain name as it also incorporates the acronym of the country code of China, which is the

country the Domain Name purports to operate in.

Accordingly, in the Panel’s view, the Respondent must have been aware of the existence of the

Complainant’s activities and rights at the time the Respondent registered the Domain Name. All the more

so, because the Respondent seems to use the Website in order to offer for sale products of the ELEMIS

brand.

As a result, the Respondent has registered and is using the Domain Name to intentionally attract Internet

users for commercial gain to its Website by creating a likelihood of confusion with the Complainant’s ELEMIS

Trademark as to the source, sponsorship, affiliation or endorsement of the Website or the products that are being offered for sale on the Website.

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Furthermore, the Panel takes into consideration that the Respondent has been hiding behind a privacy shield. In accordance with section 3.6 of the WIPO Overview 3.0 this also supports a finding of registration and or use in bad faith.

Finally, although the lack of a formal or substantive response by the Respondent as such cannot by itself lead to the conclusion that there is registration and use in bad faith. The cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the registration and use of the Domain Name by the Respondent is in bad faith.

In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <elemiscn.com> be transferred to the Complainant.

/Willem J. H. Leppink/

Willem J. H. Leppink

Sole Panelist
Date: September 26, 2022