Coty Deutschland GmbH v. Punt Grafic

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Coty Deutschland GmbH v. Punt Grafic

Case No. D2001-0490

1. The Parties

1.1 The Complainant is Coty Deutschland GmbH, a German corporation, with its

principal place of business at Fort Malakoff Park, Rheinstrasse 4E, Mainz, Germany.

1.2 The Respondent is Punt Grafic, with an address at Agudells, 19-21, 4, Barcelona,

Spain.

2. The Domain Name and Registrar

2.1 The domain name at issue is <cotyastor.com>. The registrar is Tucows.com,

Inc. of 96 Mowat Avenue, Toronto, Ontario, M6K 3MI, Canada.

3. Procedural History

3.1 The Complaint was received by WIPO by email on April 3, 2001, and by hard

copy on April 5, 2001.

On April 19, 2001, an Acknowledgement of Receipt of Compliant was notified.

3.2 On April 10, 2001, a request for verification of data was issued and on

April 10, 2001, the Registrar confirmed that it was the registrar

of the domain name in dispute.

3.3 On April 11, 2001, a Notification of Complaint and Commencement of Administrative

Proceeding and a copy of Complaint were transmitted to the Respondent.

3.4 On April 24, 2001, the Center received a returned Notification of Complaint

from the Respondents postal address.

3.5 On May 2, 2001, Notification of Respondent Default was given.

3.6 On May 11, 2001, Notification of the Appointment of the Administrative

Panel was sent to both the Complaint and Respondent by email. The notification

informed the parties that the Administrative Panel would consist of a single

panelist Mr. Gary Biesty.

4. Factual Background

4.1 The Complainant is the proprietor of the trademarks COTY and ASTOR, in

use since 1996 and 1964 respectively. COTYASTOR has been used as a trade name

by the Complainant’s licensee since 1999.

4.2 The mark COTY has been used in connection with soaps, perfumes, essential

oils, cosmetics and lotions and the mark ASTOR has been used in connection with

lotions, essential oils, soaps and candles.

4.3 Throughout the world, the Complainant has registered trademarks for COTY

and ASTOR.

4.4 The domain name COTYASTOR.COM was registered by the Respondent on May 5,

2001.

5. The Parties Contentions

5.1 The Complainant asserts that:

(a) the Respondent has sought to register and hold a domain name identical

or confusingly similar to the Complainant’s trademarks COTY and ASTOR;

(b) the Respondent has no rights or legitimate interests in the domain name;

and

(c) the registration and use of the domain name is in bad faith.

5.2 The Respondent has not filed a response and accordingly offers no evidence

in rebuttal of the Complainant’s assertions.

5.3 The Respondent’s web site consists of three paragraphs describing the negative

aspects of the beauty industry in general which the Complainant asserts is directed

at its business. The Complainant asserts that the Respondent’s use of the domain

name is not in connection with a bona fide offering of goods or services (paragraph

4 (c)(i) of the Policy), the Respondent has not been commonly known by the domain

name (paragraph 4 (c)(ii) of the Policy) nor is the Respondent making a legitimate

non commercial or fair use of the domain name, without intent for commercial

gain to misleadingly divert customers (paragraph 4 (c)(iii) of the Policy).

The Complainant contends that the Respondent’s only use of the domain name was

to mislead Coty and Astor customers and to direct them away from the real web

site.

5.4 On December 7, 2000, the Complainant sent a Cease and Desist letter to

the Respondent by email and post and was advised on December 14, 2000, by Federal

Express that the Respondent’s address did not exist. This is alleged to constitute

bad faith.

5.5 The Complainant alleges that the Respondent did receive its email as on

or about December 14, 2000, the Respondent asked for its domain name server

to be deactivated so that the site can no longer be accessed and this is alleged

also to constitute bad faith.

6. Findings and Decision

6.1 The Panel finds that the Respondent was correctly identified in the Tucows

Verification as the Registrar of the disputed domain name <cotyastor.com>.

6.2 The Complainant is correct in asserting that the Respondent has sought

to register a domain name which is identical to the Complainant’s trademarks

COTY and ASTOR in Spain.

6.3 The Respondent has no rights or legitimate interests in the domain name.

There is no evidence to show that the Respondent has any connection to the trademarks

COTY, ASTOR or COTYASTOR. The Respondent is not licensed or otherwise permitted

by the Complainant to use its trademark or to apply for the domain name incorporating

its marks. The domain name no longer leads to a web site and this indicates

the Respondent’s lack of legitimate rights or interests in the domain name.

If the Respondent had replied then it may have been able to show that it had

legitimate interests in the domain name and the registration and use of it were

not in bad faith on moral objection/ freedom of speech grounds. In particular,

the Uniform Policy sets out details of how a Respondent may demonstrate its

rights to and legitimate interests in a domain name at Paragraph 4 (c).

If the Respondent had put forward details of why it was using the domain name

for a legitimate non commercial or fair use without intent for commercial gain

to misleadingly direct customers or to tarnish the trademark under Paragraph

4 (c)(iii) then the Panel may have found in favour of the Respondent. However,

no such arguments have been put forward. It should be remembered, however, that

the onus is on the Complainant to show that the Respondent has no rights or

legitimate interests in the domain name and also to prove the other two elements

at Paragraph 4 (a)(i) and (iii) of the Policy.

6.4 The Complainant must prove both registration in bad faith and use in bad

faith. The Respondent must have been aware of the Complainant’s rights in the

trademarks when it registered the domain name as it has used the web site to

attack the beauty industry which indicates that the Respondent was aware that

web users would connect to the site when looking for information on Coty and

Astor beauty products. The Complainant has satisfied this requirement and that

the domain name <cotyastor.com> has been registered and is being used

by the Respondent in bad faith owing to the fact that the Respondent’s address

does not exist and further, that the domain name no longer leads to an operational

web site. It should be noted that, contrary to the Complainant’s contentions,

"non-responsiveness" does not automatically constitute bad faith.

7. Decision

7.1 The Panel awards the remedy sought by the Complainant and requests and

requires that the domain name <cotyastor.com> be transferred to the Complainant.

Gary Biesty

Sole Panelist

Dated: May 31, 2001

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