WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kosmea Pty Limited v. Carmel Krpan

Case No. D2000-0948

1. The Parties

1.1. The Complainant is Kosmea Pty Limited, ACN 071 488 009, a company incorporated in Australia with its registered office at 125 Carrington Street, Adelaide, South Australia (the "Complainant").

1.2. The Respondent is Carmel Krpan of PO Box 697 Broadbeach, Queensland, Australia (the "Respondent").

 

2. The Domain Name and Registrar

2.1. The domain name upon which this Complaint is based is kosmea.com (the "Domain Name"). The registrar of the domain name is Core, Internet Council of Registrars (the "Registrar").

 

3. Procedural History

3.1. The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").

3.2. The Complaint was received by the WIPO Arbitration and Mediation Center (the "Centre") by email on August 4, 2000 and in hard copy on August 8, 2000. The Complaint states that the fee of US$1,000 was paid by cheque sent by express courier to the WIPO Mediation and Arbitration Centre together with the Complaint. The Complaint states that a copy of the Complaint was sent to the Respondent on August 4, 2000 by email and by registered post, and to the Registrar also on that date by email and by registered post.

3.3. The Centre sent a Request for Registrar Verification to the Registrar on August 28, 2000 by email. The Registrar responded to the Centreís request by facsimile on August 31, 2000, verifying (1) the Registrar was in receipt of the Complaint, (2) that the Registrar was the registrar for the Domain Name (3) that the Respondent was the current registrant of Domain Name, (4) the Respondentís contact details, (5) that the Uniform Domain Name Dispute Resolution Policy was applicable to the Domain Name, and (6) that the Domain Name had "active" status.

3.4. The Centre sent the Notification of Complaint and Commencement of Administrative Proceeding on August 28, 2000 to the Respondent by post/courier, facsimile and email, and to the Complainant by email.

3.5. The Centre received the Response from the Respondent by email on September 15, 2000 and hardcopy on September 19, 2000. The Response did not contain a request that the dispute be dealt with by a three member panel. The Centre sent an Acknowledgment of Receipt (Response) to both the Respondent and Complainant on September 15, 2000 by email.

3.6. On September 15, 2000 the Centre sent the panelist an invitation to serve in this dispute and the panelist returned a Declaration of Impartiality. The Centre sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainant on September 21, 2000 via email. A copy was also sent to the Panel on the same date by email.

3.7. The Centre dispatched a Transmission of Case File notice to the Panel, to the Respondent and to the Complainant on September 21, 2000.

3.8. All other procedural requirements appear to have been satisfied.

 

4. Factual Background

4.1 Activities of the Complainant

The Complainant asserts (and the Respondent does not dispute) that it manufactures and sells skincare, haircare and cosmetic products containing rose hip oil. The products are sold through pharmacies, health food stores, department stores, beauty therapists and naturopathic and homeopathic practitioners throughout Australia.

4.2 The Complainantís Trade and Service Marks

The Complainant was incorporated on 18 October 1995 and has apparently conducted and promoted its business activities using the trade name Kosmea since that date. Prior to incorporation and since approximately 1993, the present director of the Complainant manufactured and sold the products under the trade name Kosmea.

The Complainant is the registered proprietor of the following trade marks:

Australian trade mark no. 723926 for KOSMEA (registered from December 12, 1996 in class 3);

Australian trade mark no. 723927 for KOSMEA ROSE HIP OIL and device (registered from December 12, 1996 in class 3)

United Kingdom trade mark no 2157708 for KOSMEA (registered from February 10, 1998 in class 3)

The Complainant is also the applicant for the following trade marks:

Australian trade mark application no. 839781 for KOSMEA (lodged on July 4, 2000 in classes 5 and 35).

USA trade mark application no 75/762242 for KOSMEA (filed on July 28,1999, published on August 1, 2000 in class 3)

The Complainantís above trade marks will be described as the "Complainantís Mark".

In the August 4, 2000 affidavit of Marie Jenkins, sole director of the Complainant ("Jenkins Affidavit"), it is stated that the Complainant is also the applicant for Malaysian trade mark application no 97/04456 for KOSMEA ROSE HIP OIL in class 3. However, the Panel notes that the applicant for this trade mark is in fact Kosmea Australia Pty Limited, (another company of which Ms. Jenkins is the director), not the Complainant.

4.3. Activities of the Respondent

The Respondent has stated in her affidavit dated September 15, 2000, which is Annex 1 to the Response ("Krpan Affidavit"), that she and her husband conduct a mail order business under the name Natural Health Direct which provides "information about and access to a wide range of natural products from nutritional to personal body care that help combat stress, allergies, toxins, free radicals and other 20th Century phenomenon [sic]". One of the ranges of products sold by the Respondentís business is the Complainantís Kosmea range.

The Respondentís primary world wide web presence is at www.naturalhealthdirect.com.au ("the Natural Health Direct website"). It registered the kosmea.com domain name on 17 April 2000 and set up a web page at the site featuring an image of the Kosmea Rose Hip Oil product and a link to the Natural Health Direct website. Following correspondence in May 2000 with the Complainantís legal representatives outlining the Complainantís objections to the Respondentís registration and use of the Domain Name, the Respondent removed all references to the Complainantís products from the website but continued and continues to use the Domain Name.

 

5. The Complainantís Contentions in the Complaint

5.1. The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.

5.2. In relation to the element described in paragraph 4(a)(i) of the Policy, the Complainant asserts that the Domain Name is identical to the Complainantís Marks.

5.3. In relation to the element in paragraph 4(a)(ii) of the Policy, the Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name.

5.4. In relation to the requirement of paragraph 4(a)(iii) of the Policy, the Complainant asserts that the Domain Name "was registered by the Respondent in bad faith".

5.5. In support of the assertions outlined in paragraph 5.3 and 5.4, the Complainant submits that:

the Respondent registered the Domain Name for the purpose of attracting a financial gain "from misleading internet users into thinking that there is a connection between the Respondentís websites and the Complainant"

there is no evidence to suggest that the Respondent "had made any use of, or demonstrable preparations to use" the Domain Name in connection with a bona fide offering of goods prior to being contacted by the Complainant.

the correspondence received from the Respondent indicates that the Respondent registered the Domain Name for the purpose of selling the Domain Name "to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the [D]omain [N]ame."

In addition to the matters set out in the Complaint, the Complainant relies on the matters attested to in the Jenkins Affidavit.

 

6. The Respondentís Contentions in the Response

6.1. In relation to the element described in paragraph 4(a)(i) of the Policy the Respondent acknowledges that the Domain Name "is similar to trade marks in which the Complainant has rights". The Respondent goes on to assert that "this might also be said of other registered domain names, for example, kosmea.sk and kosmea.net". The Respondent also asserts that she is:

"in the business of selling the Kosmea Rose Hip Oil Range and , as such, it has the right to inform consumer s that it sells such goods. Accordingly, the Respondent claims its use of the [D]omain [N]ame and site falls under the fair use doctrine as a defence to infringement."

6.2. In relation to the element described in paragraph 4(a)(ii) of the Policy the Respondent asserts that she "has rights and a legitimate interest" in respect of the Domain Name

6.3. In support of that assertion the Respondent submits that:

the Domain Name was being used "in connection with the bona fide offering of goods and services (the Kosmea Rose Hip Oil Range) before any notice of this dispute";

the Respondent continues to be involved in the sale of the Kosmea Rose Hip Oil range of products through Respondentís Mail Order and Online Shopping businesses;

after being informed of the Complainantís objections, the Respondent revised the Domain Name site "to reflect the true meaning of the Ancient Greek word Kosmea, derived from Ďkosmosí meaning Ďorderí and Ďharmonyí";

the Respondent believed that "the true meaning of the word Ďkosmeaí closely corresponded to Respondentís own philosophy and mission statement of promoting natural health products to help restore balance to peopleís lives".

in an effort to alleviate any potential harm claimed by the Complainant and at the Complainantís request "that the Domain Name site not be associated in any way with the Complainantís Kosmea Rose Hip Oil range", the Respondent placed a temporary page at the website "advertising the imminent arrival of an online shopping centre designed to sell a range of nutritional supplements".

the Respondent then decided to revise the website so that it made no reference to the Kosmea Rose Hip Oil products "to alleviate [the] Complainantís threats of litigation".

6.4. In relation to the element described in paragraph 4(a)(iii) of the Policy the Respondent asserts that:

(a) she did not register the Domain Name with the intention of selling, renting or otherwise transferring it to the Complainant;

(b) she did not register the Domain Name in order to prevent the Complainant from using the mark in a domain name;

(c) she did not register the Domain Name for the purpose of disrupting the business of the Complainant; and

(d) she is making fair use of the Domain Name and has at no time attempted to misleadingly divert consumers or tarnish the trade mark of the Complainant.

6.5. In support of the assertion that she did not register the Domain Name with the intention of selling, renting or otherwise transferring it to the Complainant the Respondent submits that:

The issue of sale of the [Domain Name] only arose as a commercial option after Complainant lodged objection with the Respondent.

While the Respondent indicated they would be willing to consider any serious commercial offer, the offers made by the Complainant were deemed by the Respondent to be unworthy of consideration in light of the fact that the Respondent believed it had legitimate rights to the registration and use of the [Domain Name] and had already invested considerable resources in the development of a fully functional online shopping centre.

There is no evidence that [the] Respondent made any effort to sell the [Domain Name] to the Complainant, a competitor or anyone else before the complaint was received.

After registering [the Domain Name] the Respondent immediately established a web presence for the [Domain Name] and marketed this site to all major search engines.

The Respondent currently owns a number of domain names and has never at any time listed any of these sites for sale.

6.6. In support of the assertion that she did not register the Domain Name in order to prevent the Complainant from using the mark in a domain name, the Respondent submits that:

The Complainant had already established a web site at Ďkosmea.com.auí operating since early 1998, the domain name of which indicates [the] Complainantís mark, the commercial nature and the geographical location of [the] Complainantís business.

Ö all top-level domain names, including Ďkosmea.comí; Ďkosmea.netí and Ďkosmea.orgí were available prior to April 2000 Ö[and] the Complainant had every opportunity to secure the [Domain Name] prior to this date.

Regret at having failed to [secure the Domain Name] for whatever reason is no basis to invoke the Policy to force the Respondent who purchased and is using the name in good faith for legitimate purposes, to transfer the name at no charge.

6.7. In support of the assertion that she did not register the Domain Name for the purpose of disrupting the business of the Complainant the Respondent submits that:

[the] Respondent is in fact in the business of selling Kosmea Rose Hip Oil products and, as such, has the right to inform consumers of the availability of same. Respondent is acting within the chain of distribution set in place by the Complainant and registered the domain name primarily to promote, not disrupt, the business of the Complainant.

6.8. In support of the assertion that she is making fair use of the domain name and has at no time attempted to misleadingly divert consumers or tarnish the trademark of the Complainant the Respondent submits that:

The [Domain Name] was originally used to direct internet customers to the Natural Health Direct website which offered the Complainantís Kosmea Rose Hip Oil products for sale online.

The Respondentís Natural Health Direct website was established with the full knowledge of the Complainantís authorised State distributor and the Complainant has since confirmed in writing that it has Ďno problemsí with the Natural Health Direct website continuing to advertise and sell the Kosmea Rose Hip Oil range.

The linking of [the Domain Name] to the Natural Health Direct website was a temporary measure while a fully functional Online Shopping Centre was being created at the "kosmea.com" site, which was originally intended to also include the Kosmea Rose Hip Oil range of products.

However when the Complainant lodged an objection demanding that Respondent cease and desist from using the "kosmea.com" domain name, the Respondent made accommodations and revised the "kosmea.com" site to remove all connection with the Complainantís Rose Hip Oil range of products.

 

7. Discussion and Panel Findings

7.1. This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present. Unfortunately, both the Complainant and Respondent addressed numerous irrelevant issues in their submissions. The Panel has paid no regard to material not relevant to the elements set out in paragraph 4 of the Policy.

7.2. Domain Name identical or confusingly similar to Complainantí Mark

The domain name in dispute is kosmea.com. It comprises only "kosmea" together with the .com TLD designation.

The Panel is satisfied that:

(a) the Complainantís Australian registered trade marks nos. 723926 and 723 927 for KOSMEA; and

(b) the Complainantís UK registered trade mark no. 2157708 for KOSMEA,

are sufficient to found the Complainantís assertion that it has rights in the mark KOSMEA. There is additional evidence of extensive use of KOSMEA as a brand name for the Complainantís products for many years.

The Respondent has acknowledged that the Domain Name "is similar to trade marks in which the Complainant has rights". The Panel notes that the Respondentís further assertion that "this might also be said of other registered domain names, for example, kosmea.sk and kosmea.net" is not relevant to the question of whether Paragraph 4(a)(i) of the Policy has been satisfied.

On any view the Domain Name in dispute is identical to the Complainantís Mark and Paragraph 4(a)(i) of the Policy is satisfied.

7.3. The Respondent has no rights or legitimate interests in the Domain Name

The Panel notes that the Respondent has not asserted that she is commonly known by the Domain Name, nor that the Domain Name is a trade mark by which her own products are known. Indeed it seems that the Respondent asserts that her rights to the Domain Name can be based on the fact that she distributes the Complainantís products.

It remains for this Panel to consider whether the Respondent has rights to and legitimate interests in the Domain Name because:

(a) prior to the notice of the dispute, she has used the Domain Name in connection with a bona fide offering of goods or services (see paragraph 4(c)(i) of the Policy); or

(b) she is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainantís Mark (see paragraph 4(c)(iii) of the Policy).

The Panel considers that the following statements, contained in the Krpan Affidavit, tell against the Respondent:

"35. On 17 the April 2000, in an effort to be more proactive in a competitive market, we decided to immediately register "kosmea.com" for the following reasons:

35.1 The opportunity to attract more Online sales of the Kosmea Rose Hip Oil range of products by better placement in international search engine

35.2 To secure our internet position over other retailers of the same range of products"

The impact of these statements is enhanced by the following statements in the letter dated June 12, 2000 from the Respondent to the Complainantís legal representatives (Attachment CK6 to the Krpan Affidavit):

"When we realised that kosmea.com was available we saw this as a great commercial opportunity to further promote our sales of this range of Australian Products throughout the world"

Ö

"Our reasons for registering the domain name kosmea.com were purely to further promote our business internationally"

The circumstances suggest to the Panel a clear intention on the part of the Respondent, prior to notice of the dispute, to obtain commercial gain by using Complainantís Mark in the Domain Name. Whilst there is no suggestion of tarnishment of the Complainantís Mark, the inclusion of a link to the Respondentís Natural Health Direct website evinces a clear intention to divert consumers of the Complainantís products to the Respondentís site by using the Complainantís Mark. The domain name did not (and does not) resolve to a page solely concerned with Complainantís products. The Panel also observes that the Respondent uses Ďkosmeaí as a keyword in her siteís content meta tag, which is identical to the first keyword in the corresponding meta tag of the Complainantís site. In the Panelís view the Respondentís conduct is quite different from that of the respondents whose conduct is the subject of the decisions in references R1 to R3 of the Response. In all cases the domain names there in dispute involved substantive legitimate rights to use the underlying mark, which is not the case here. The Respondent cites no more than her selling of some of the Complainantís products as a basis for a legitimate right to use the Complainantís trade mark as her domain name. The Panel regards the cited decisions as based on facts clearly distinguishable from the conduct of the Respondent in this case. The Respondent cannot use the Complainantís mark in relation to products not those of the Complainant, which would be the effect of accepting the position for which the Respondent contends.

Although the Respondent has applied for the registration of "kosmea.com" as a trade mark, the application for registration was only made on June 20, 2000 (after the dispute was brought to the notice of the Respondents) and therefore the filing of the application per se cannot give rise to any rights or legitimate interest in the Domain Name.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.

7.4. The Domain Names have been registered and are being used in bad faith

The Complaint only asserts that the Domain Name "was registered by the Respondent in bad faith". However, paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith. Paragraph 4(b) of the Policy provides:

"Öthe following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith: Ö" (emphasis added)

7.5. Registration in bad faith

The Complainant asserts that the Respondentís bad faith registration is indicated by the Respondentís attempts to sell the Domain Name to the Complainant for valuable consideration in excess of the Respondentís out-of-pocket expenses directly related to the Domain Name. The Respondent stated, in her letter dated June 12, 2000 to the Complainantís legal representatives, which is Attachment CK6 to the Krpan Affidavit, that she "may choose at a future date to register this domain name for sale to interested parties". She later refused an offer of $2000 from the Complainant for the Domain Name. These factors are not strong indications of bad faith registration on the grounds set out in paragraph 4(b)(i) of the Policy, particularly when one considers the amount of work put into the website by the Respondent.

However, in addition to the above factors, the Panel considers that the statements contained in the letter dated June 12, 2000 from the Respondent to the Complainantís legal representatives, which is Attachment CK6 to the Krpan Affidavit, outlined in paragraph 7.4 above, are sufficient to indicate registration of the Domain Name in bad faith on the grounds set out in paragraph 4(b)(iv) of the Policy. Those statements indicate that the Respondentís clear reason for registering the Domain Name was to attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainantís Mark.

7.6. Use in bad faith

The statements of the Respondent and her conduct referred to above clearly indicate an intention on the part of the Respondent to use the Domain Name (featuring the Complainantís Mark ) in an attempt to attract, for commercial gain, Internet users to her website by creating a likelihood of confusion with the Complainantís Mark (see paragraph 4(b)(iv) of the Policy). The continued use of Ďkosmeaí as a meta tag keyword is clear evidence of this.

The Panel does not necessarily regard use of "kosmea" as a directory name (as part of the URL path) as objectionable. It is only use as a domain name that creates an issue. A directory or filename as part of a path, as shown in Attachment MJ13 to the Jenkins Affidavit, would not be problematical if the content thus referenced related to the Complainantís products. However, the Panel notes that the Respondent has changed the manner in which she uses the Domain Name. The Respondent described the changes made to the website in her letter dated June 12, 2000 to the Complainantís legal representatives, which is Attachment CK6 to the Krpan Affidavit:

"We have removed all trade marks and product descriptions and images pertaining to the Kosmea skin care range from kosmea.com and have restructured our site to simply reflect the essence of the term "kosmea" in its true meaning, a meaning which well relates to our philosophy of restoring balance to peopleís lives through natural health products.í"

The website now appears to be an online shopping mall for natural health products. The website no longer contains any mention of Natural Health Direct and the "Company Profile" page does not refer to any entity and contains only the following information, which, in the view of the Panel, is likely to compound the confusion of Internet users:

"Kosmea.com

Bring balance to your life....naturally!

Kosmea is derived from the ancient Greek word 'kosmos' meaning order, harmony. As a new millennium dawns, more people are learning to trust in nature to help them restore balance to their lives

Z & Carmel Krpan
Kosmea.com
PO Box 697
Broadbeach
Queensland 4218
Australia

Tel:0755277814
Fax: 0730090660
mail@kosmea.com
http://www.kosmea.com"

The "Our Products" link contains reference to none of the Complainantís products.

The fact that the website is now stated to be operated by an entity known as "kosmea.com", the circumstances of the Respondentís use of the Domain Name and the history of her relationship with the Complainant are all factors which persuade this Panel that the current use of the Domain Name is a thinly veiled attempt to attract, for commercial gain, persons aware of the Complainantís products to the Respondentís site by creating a likelihood of confusion with the Complainantís Mark (see paragraph 4(b)(iv) of the Policy).

7.7. In light of the matters set out in paragraphs 7.5 and 7.6 above, the Panel is of the view that the Complainant has proved paragraph 4(a)(iii) of the Policy.

 

8. Decision

Having found that the Complainant has proved all the requirements of paragraph 4(a) of the Policy in respect of the domain name in dispute, the Panel upholds the Complaint. Accordingly, the Panel orders that the Registrar transfer kosmea.com to the Complainant.

 

 


 

Philip N. Argy
Sole Panelist

Dated: October 3, 2000