Panel admonishes PROMARK law firm for leaving out essential information.
Sothys Auriac manufactures cosmetics under the brand name Beauty Garden and markets these at BeautyGarden.com.
BeautyGarde.com is owned by an entrepreneur who incorporated BeautyGarde, LLC, in 2016. She set up a website the following year, selling products for stronger nails, longer lashes, and other beauty concerns. She also has many trademarks for the term.
Sothys Aurian previously filed a complaint with EUIPO against the Respondent over the trademark, and the Respondent was not aware of the complaint because it had an old address on file. The Complainant won the dispute as it related to the EU trademark. That EUIPO found that the trademarks were distinguishable among English speakers, though.
But Sothy Aurian’s representatives at PROMARK didn’t mention in the UDRP that the Respondent held valid trademarks in other jurisdictions. In finding reverse domain name hijacking, the three-person panel wrote:
…the Complainant failed to disclose the crucial point that the Respondent owned some six registered trade marks for BEAUTYGARDE, i.e., aside from the one invalidated by the EUIPO Decision. The Panel thinks it inconceivable that the Complainant was unaware of the existence of those marks when it filed its Complaint, and indeed the Complainant’s supplemental filing does not deny the Respondent’s assertion that the Complainant did know about them.
The Complainant must have appreciated that the existence of those six trade marks seriously undermined its case under the second element, and no doubt that is the reason that they were not produced to the Panel. If this case had not been defended, as happened with the EUIPO proceeding, an injustice may well have been done.
The panel went an extra step and put the blame directly on PROMARK:
Finally, the Panel would observe that it expects that the Complainant itself was unaware of the matters constituting RDNH and that, most likely, the fault lies solely with the Complainant’s representatives.
I don’t recall ever seeing a statement like this in a UDRP that at the same time lets the Complainant itself off the hook while blaming the lawyers.
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