INDRP/1094 – Disputed Domain Name Decision: Maccosmetics.co.in (Transfer) - INDRP

Disputed Domain Name: www.maccosmetics.co.in
Case No: INDRP/1094

Make-up Art Cosmetics Inc. V. Doublefist Limited

ARBITRATION AWARD

The Parties:

The Complainant in this arbitration proceeding is Make-up Art Cosmetics Inc., a corporation incorporated under the laws of Delaware. Itsregistered office is at767 Fifth Avenue, New York 10153, United States of America.
The Respondent in this arbitration proceeding is Doublefist Limited, located at Street-Room 501, Building 4, Taoli Garden, Huaiyin District, Huai’an City, Jingsu Province, Chinaas per the details given by the Whois database maintained by the National Internet Exchange of India [NIXI].

The Domain Name and Registrar:

The disputed Domain name is www.magcos_metics.co.jn. The Registrar with which the disputed domain name is registered is Dynadot LLC. (R173- AFIN)

Procedural History [Arbitration Proceedings]:

This arbitration proceeding is in accordance with the .IN Domain Name Dispute Resolution Policy [INDRP], adopted by the National Internet Exchange of India [“NIXI”]. The INDRP Rules of Procedure [the Rules] were approved by NIXI on 28th June 2005 in accordance with the Indian Arbitration and Conciliation Act, 1996. By registering the disputed domain name with the NIXI accredited Registrar, the Respondent agreed to the resolution of the disputes pursuant to the IN Dispute Resolution Policy and Rules framed there under.

According to the information provided by the National Internet Exchange of India [“NIXI”], the history of this proceeding is as follows:

In accordance with the Rules, 2(a) and 4(a), NIXI formally notified the Respondent of the Complaint, and appointed James Mukkattukavunkal as the Sole Arbitrator for adjudicating upon the dispute in accordance with the Arbitration and Conciliation Act, 1996, and the Rules framed there under, .IN Domain Name Dispute Resolution Policy and the Rules framed there under. The Arbitrator submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by NIXI.

The request for submission with a complete set of documents was dispatched to the Respondent by the Arbitrator on 28th June, 2019 .

Electronic copy of the complete set of documents was also sent to the Respondent on 31st May, 2019. The Respondent was requested to send in all such documents by 26th July, 2019. The Respondent did not reply.

Grounds for the administrative proceedings:

1. The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has statutory/common law rights.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name.
3. The disputed domain name has been registered or is/are being used in bad faith.

Background of the Complainant and its statutory and common law rights Adoption:

The complainant in this arbitration proceeding is Make-up Art Cosmetics Inc, a company incorporated under the laws of Delaware. It was founded in 1983 and manufacturer as well as providers of services in the field of cosmetics, skin care products, fragrances, cosmetic brushes, bags and accessories. The company has over 2500 independent stores in 105 countries.

Statutory rights:

The Complainant contends that the trademark “Mac/M.A.C/Mac Cosmetics/Maccosmetics” (MAC portfolio)has been protected in India under
The Trademark Act 1999 under classes 3, 14, 35. The complainant contends that the domain name maccosmetics.com has been in use by the complainant since the year 1996. The Complainant contends that the MAC portfolio have acquired global reputation and goodwill and are well known marks. The first trademark registration of the mark “MAC” is in the year 1995,The Complainant holds a domain name registration for www.maccosmetics.com.

Respondent:

The Respondent failed to reply to the notice regarding the complaint.

Discussion and Findings:

The Respondent does not have any relationship with the business of the Complainant or any legitimate interest in the mark/brand “Maccosmetics”. Moreover, the Complainant has neither given any license nor authorized the Respondent to use the Complainant’s mark.

It is a well-established principle that once a Complainant makes a prima facie case showing that a Respondent lacks rights to the domain name at issue; the Respondent must come forward with the proof that it has some legitimate interest in the domain name to rebut this presumption. Moreover, the panel would like to note the material submitted by the Complainant shows that they have been substantially investing in promoting the reputation and goodwill of the brand Maccosmetics. On the same note the same marketing has’ also been done in India in conjunction with leading artistes in India.

The Respondent’s Default:

The INDRP Rules of Procedure require under Rule 8(b) that the arbitrator must ensure that each party is given a fair opportunity to present its case. Rule 8(b) reads as follows

“In alt cases, the Arbitrator shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.”

Rule ll(a) empowers the arbitrator to proceed with an ex parte decision in case any party does not comply with the time limits or fails to reply against the complaint. Rule ll(a) reads as follows:

“In the event that a Party, in the absence of exceptional circumstances as determined by the Arbitrator in its sole discretion, does not comply with any of the time periods established by these Rules of Procedure or the Arbitrator, the Arbitrator shall proceed to decide the Complaint in accordance with law.”

The Respondent was given notice of this administrative proceeding in accordance with the Rules. The .IN Registry discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.

As previously indicated; the Respondent failed to file any reply to the Complaint and has not sought to answer the Complainant’s assertions, evidence or contentions in any manner. The Arbitrator finds that the Respondent has been given a fair opportunity to present his case.

The ‘Rules’ paragraph 12(a) provides that the Arbitrator shall decide the Complaint on the basis of the statements and documents submitted in accordance with the INDRP and any law that the Arbitrator deems fit to be applicable. In accordance with Rules paragraph 12, the Arbitrator may draw such inferences as are appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Arbitrator’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.

The issues involved in the dispute

The Complainant in its complaint has invoked paragraph 4 of the INDRP, which reads:

“Types of Disputes –
Any Person who considers that a registered domain name conflicts with his legitimate rights or interests may file a Complaint to the .IN Registry on the following premises:

(i) the Respondent’s domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (Hi) the Respondent’s domain name has been registered or is being used in bad faith.

The Respondent is required to submit to a mandatory Arbitration proceeding in the event that a Complainant files a complaint to the .IN Registry, in compliance with this Policy and Rules thereunder.”

According to paragraph 4 of the INDRP, there are 3 essential elements of a domain name dispute, which are being discussed hereunder in the light of the facts and circumstances of this case.

Parties Contentions:

I. The Respondent’s domain name is identical and confusinqly similar to a name, trademark or service in which the Complainant has rights.

Complainant:
The Complainant, based on various Indian and international trademark registrations across various classes owns the trademark “MAC” [Mac Portfolio].The Complainant has shown that the said trademark has been used in India so as to acquire a secondary meaning in India whereby consumers would identify the word “Maccosmetics” as indicating the source of origin as the Complainant in the minds of the Consumer in the national region of India. However, based on the use of the said trademark in India other countries and on the digital forum, the Complainant has submitted that it is the sole proprietor of and has sole and exclusive rights to use the said trademark “Maccosmetics”.

The Complainant submits that as the disputed domain name is ‘Maccosmetics.co.in’, it is cleariy identical/confusingly similar to the Complainant’s trademarks – “MAC Trademarks Portfolio – including ‘Maccosmetics’ among others”-in which the Complainant has exclusive rights and legitimate interest.

It has been proved by the Complainant that it has the intellectual property, particularly trademark rights, in various jurisdictions.

However, there is no trademark registration in India for the word “Maccosmetics” with the company. However, it is pertinent to note that the complainant has had a domain name registration to the style of “maccosmetics.com” from the year 1996.The mark has been highly publicized and advertised by the Complainant in both the electronic and print media; both digitally and globally and the disputed domain name is similar to that of the Complainant’s applied to trademark in India, services and domain names

A mere glance at the disputed domain name may give rise to enormous confusion as to its origin. The disputed domain name registered by the Respondent is identical to the Corporate as well as the trademark of the Complainant that it holds in various jurisdictions.

The basic fact that Maccosmetics has a significant presence in the virtual world and searches identify goods bearing the word “Maccosmetics” exclusively with the Complainant entails that the Complainant has obtained a certain amount of reputation and goodwill (Secondary Meaning) in respect of the applied mark “Maccosmetics” in the national territory of India.Therefore in pursuance to the aforementioned rules of trademark law it can be said that the complainant enjoys statutory and common law proprietary rights over the word ‘Maccosmetics’ and the public will come to identify the said trademark exclusively with the complainant and no one else. This panel comes to a conclusion that when a domain name contains a trademark in its entirety, the domain name is identical or at least confusingly similar to the trademark. [Relevant Decisions: International Business Machines Corporation v. Zhu Xumei, INDRP/646, (January 30, 2Q15);Jaguar land Rover v. Yitao, INDRP/641, (January 4,2015}]

According to the 1NDRP paragraph 3, it is the responsibility of the Respondent to find out before registration that the domain name he is going to register does not violate the rights of any proprietor/brand owner.
Paragraph 3 of the INDRP is reproduced below:

“The Respondent’s Representations –

By applying to register a domain name, or by asking a Registrar to maintain or renew a domain name registration, the Respondent represents and warrants that:

• the statements that the Respondent made in the Respondent’s Application Form for
Registration of Domain Name are complete and accurate;
• to the Respondent’s knowledge, the registration of the domain name will not infringe
upon or otherwise violate the rights of any third party;
• the Respondent is not registering the domain name for an unlawful purpose; and
• the Respondent will not knowingly use the domain name in violation of any
applicable laws or regulations.

It is the Respondent’s responsibility to determine whether the Respondent’s domain name registration infringes or violates someone else’s rights.”

Respondent:

The Respondent has failed to respond to the Complainant’s complaint and assertions. The Respondent has failed in his responsibility discussed above and in the light of the pleadings and documents filed by the Complainant; The Panel comes to the conclusion that the disputed domain name is identical with or deceptively similar to the Complainants’ marks and its business. Accordingly, the Panel concludes that the Complainant has satisfied the first element required by Paragraph 4 of the INDRP.

II. The Respondent has no rights or legitimate interests in respect of the disputed domain name

Complainant:

The second element that the Complainant needs to prove and as is required by paragraph 4(ii) of the INDRP is that the Respondent has no legitimate right or interests in the disputed domain name.

Once the Complainant makes a prima facie case showing that the Respondent does not have any rights or legitimate interest in the domain name, the evidentiary burden shifts to the Respondent to rebut the contention by providing evidence of its rights or interests in the domain name.

The Respondent cannot have any right or legitimate interest in the disputed domain name because the disputed domain name incorporates the ‘Mac”mark, a mark in which the Complainant has the sole and exclusive right and that is well known owing to the Complainant’s efforts.

The Respondent is not authorized by the Complainant to use the domain name. In the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bonafide or legitimate use of the domain name could be claimed by the Respondent [Relevant Decisions: Statoil ASA v. Bright, AK, D2014-1463 (WIPOOctober 14, 2014)and Swiss Eco Patent 5.A. v. Verdicchio Simon, D2014-1804 (WIPO November 21, 2014)]

The registration of the disputed domain name by the Respondent is therefore a case of passing off. The panel agrees with the contention of the Complainant that the Respondent’s website of the disputed domain name infringes the right of the Complainant and the Respondent is in willful default thereof.

Respondent:
The Respondent has failed to respond to the Complainant as noted above.

For these reasons, the Arbitrator finds that the Respondent has no rights or legitimate interests in the disputed domain name.

III. The disputed domain name has been registered or is being used in bad faith.

Complainant:
It has been contended by the Complainant that the Respondent has registered the disputed domain name in bad faith. The language of the INDRP paragraph 4 (iii) is clear enough, and requires that either bad faith registration or use of bad faith has to be proved.
Paragraph 6 of the INDRP provides that the following circumstances are deemed to be evidence that a Respondent has registered and used a domain name in bad faith:

“Circumstances indicating that the Respondent has registered or 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 the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

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

By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its Website or location or of a product or service on its Website or location.”

From the circumstances of the case and from the evidences put before the Panel by the Complainant, the Panel is of the opinion that the Respondent had no previous connection with the disputed domain name and any use of the disputed domain name by the Respondent, would result in confusion and deception of the trade, consumers and public, who would assume a connection or association between the Complainant and the Respondent. Thus, the adoption of an identical trademark/domain name [www.maccosmetics.co.in] by the Respondent is very much in bad faith.

On perusal of the disputed domain name the panel found that the Respondent has used the disputed domain name as a page with no matter on it. This may lead to the conclusion that the page has been set up to exploit the reputation of the trademark to obtain click-through commissions from the diversion of internet users. [Relevant Decision: Reserved for Customers MustNeed.com, W!PO Case No. D2010-1048]’. The further action of intentionally have a blank page may lead internet website users to its website or the on-line location by creating a likelihood of confusion with the complainants Mac Trade Mark Portfolio that includes Maccosmetics; as to source, sponsorship or affiliation or endorsement of the website ‘www.rnaccQsmetJcs,co.in’.

It is also a well settled principle that the registration of a domain name that incorporates a mark that has acquired secondary meaning or is a well-known mark by an entity that has no relationship to the mark is evidence of bad faith. [Relevant Decision: The Ritz Carlton Hotel Company LLCv. Nelton! Brands Inc., INDRP/250 (December 30, 2011)]

The Respondent’s registration of the domain name meets the bad faith elements set forth in the INDRP. Since the trademarks of the Complainant are acquiring secondary meaning owing to the efforts of the Complainant entails the fact that the Respondent must have had actual knowledge of the goodwill and reputation enjoyed by the Complainant prior to registering the disputed domain name. There cannot be any doubt from the evidences put before this panel that the Complainant’s marks have acquired a certain reputation and goodwill; that the Respondent intended to capitalize on that confusion. Therefore the panel comes to the conclusion that the registration is in bad faith. By registering the disputed domain name with actual knowledge of the Complainant’s trademark, reputation, goodwill, which was further reinforced by the chain of events above, the Respondent acted in bad faith by breaching its service agreement with the registrar because the Respondent registered a domain name that infringes upon the Intellectual Property rights of another entity, which in the present scenario is the Complainant. [Relevant Dec’\s\on:Swarovski Aktiengesellschaft v. WhoisGuard, Inc. / Person, Johnny D.,02013-1450, (WIPO October 2, 2013); zingametall BVBA v. Mister Alexey Navalny INDRP/639(January 21, 2015)]

Respondent:
The Respondent has failed to respond to the Complainant as noted above.

Consequently it is established that the disputed domain name was registered in bad faith as well as used in bad faith

Decision:

The following circumstances are material to the issue in the present case:

(i) the Complainants’ trademark has a strong reputation and is widely known on a global basis;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed Domain Name;
(iii) taking into account the nature of the disputed domain name and in particular the .in extension alongside the Complainant’s mark, which would inevitably associate the disputed domain name closely with the Complainant’s group of domains in the minds of consumers, all plausible actual or contemplated active use of the disputed Domain Name by the Respondent is and would be illegitimate. Use by the Respondent as such would amount to passing off or in other words an infringement of the Complainant’s rights under trademark law.

The Respondent failed to comply with Para 3 of the INDRP, which requires that it is the responsibility of the Respondent to ensure before the registration of the impugned domain name by him that the domain name registration does not infringe or violate someone else’s rights. The Respondent should have exercised reasonable efforts to ensure there was no encroachment on any third party rights. [Relevant Decisions: Salmi Oy v. PACWEBS WIPO Case No. D2009-0040; Graco Children’s Products Inc. v. Oakwood Services /nc.WlPO Case No. D2009-0813; Artemides Holdings Pty Ltd v. Gregory Ricks, WIPO Case No. D2008-1254; Ville de Paris v. Jeff Walter,W\PO Case No. D2009-1278].

It is Registrant’s/Respondent’s duty under para. 3 of the .IN Dispute Resolution Policy to warrant and prove to the contrary that:

(a) the Registrant/Respondent has accurately and completely made the Application Form for registration of the domain name;
(b) to the Registrant’s knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party;
(c) the Registrant is not registering the domain name for an unlawful purpose; and
(d) the Registrant will not knowingly use the domain name in violation of any applicable laws or regulations.

It is the Registrant’s responsibility to determine whether the Registrant’s domain name registration infringes or violates someone else’s rights.”

The Complainant has given sufficient evidence to prove global trademark rights on the disputed domain name. Further, the Respondent’s adoption and registration of the disputed domain name is dishonest and malafide.
While the overall burden of proof rests with the Complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the Respondent. Therefore 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. Thus it is clear that the Respondent is using the disputed domain name in bad faith and 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. [Relevant decisions: PJS International S.A. v. Xianwang 1NDRP/616 (September 1, 2014); Mozilla Foundation v, Mr. Chandan 1NDRP/642 (January 15, 2015); Mr. Marcus Angell v. Mr. Mohit Mehto INDRP/621 (September 22, 2014); Walcom Co. Ltd v. Liheng INDRP/634 (November 24, 2014) • AB Electrotux v. GaoGou of /erect INDRP/630 (October 19, 2014) Kelemata SPA v. Mr Bassarab Dungaciu W1PO D2003-0849; Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO D2003-0455; Uniroyol Engineered Products , Inc. v. Nauga Network Services WIPO D2000-0503; Microsoft Corporation v. Chun Man Kam INDRP/119; D2012-0466 WIPO Luigi Lavazza S.p.A. v. Noori net; D2008-1474 WIPO Serta Inc. v. Charles Dawson; Guerlain S.A, v. Peikang, D2000-0055 (WIPO March 21, 2000]; Univ of Houston Sys, v. Salvia Corp., FA 637920( Nat. Arb. Forum March 215f 2006); Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24th 2006; Lockheed Martin Corporation v. Steely Black, INDRP/183 (January 5, 2011), Revlon Consumer Products Corporation of New York v. Ye Genrong, et al, D2010-1586 WIPO November 22, 2010]

The Respondent’s registration and use of the domain name [www.maccosmetics.co.in] is abusive and in bad faith. The Respondent has no rights or legitimate interests in respect of the domain name. In accordance with Policy and Rules, the Panel directs that the disputed domain name [www.maccosmetics.co.in] be transferred from the Respondent to the Complainant; with a request to NIXI to monitor the transfer.

James Mukkattukavunka
Sole Arbitrator
Date: July 31, 2019

INDRP/1094 – Disputed Domain Name Decision: Maccosmetics.co.in (Transfer)

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