WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CKLA LLC v. Mauri Ltd. / Larisa Kashkarova
Case No. D2007-0322
1. The Parties
The Complainant is CKLA LLC, Los Angeles, California, United States of America, represented by Venable, LLP, United States of America.
The Respondent is Mauri Ltd. / Larisa Kashkarova, St. Petersburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <archipelagobotanicals.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2007. On March 6, 2007, the Center transmitted by email to the then-listed registrar of record, Nameview Inc., a request for registrar verification in connection with the domain name at issue. On the same day, Nameview Inc. replied by email to the Center in the following terms: “We are no longer the Registrar. Our client asked us to remove the domain before the complaint was received.” Nameview Inc. subsequently indicated to the Center by email on March 19, 2007 that the domain name was available for the Complainant to register. That information was conveyed by the Center to the Complainant. The Complainant, in an email on April 24, 2007, advised the Center inter alia that it had attempted to register the domain name with Nameview Inc., that Nameview Inc. had quoted a fee of USD 250 to “initiate restoration of the domain name”, but that it had not been possible to process the payment in the manner requested. The Complainant stated that it had requested alternative payment methods from Nameview Inc., but that the inquiries were not returned, and that the disputed domain name “was then released and registered through eNom, Inc”. The Whois data on May 3, 2007, indicated the registrant for the disputed domain name as Mauri Ltd. Larisa Kashkarova, and the registrar as eNom.
On May 11, 2007, the Complainant filed an amendment to the Complaint which inter alia named Mauri Ltd. Larisa Kashkarova as the Respondent and eNom as the registrar.
On May 11, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On the same day, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2007.
The Center appointed Adam Samuel as the sole panelist in this matter on June 19, 2007. 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
Gregg Corzine registered the trademark ARCHIPELAGO BOTANICALS in the United States of America in 2000. It has the number 2,411,879. In June 2006, the Complainant applied to register the same trademark with the United States Patent and Trademark Office. In that application, it asserted that it was the owner of registration number 2,411,879. It and the registration document both stated that the trademark had first been used in 1995.
5. Parties’ Contentions
The Complainant’s arguments appear below. The reader of this decision will appreciate that material set out in this section are the Complainant’s contentions and not necessarily the views of the Panel.
The Complainant states that it owns a well-know trademark, ARCHIPELAGO BOTANICALS for bath oil, fragrances and candles. It has been used since at least 1995. It is the subject of a United States Registration issued on December 12, 2000, and pending applications in the United States of America, Canada, the European Union, Taiwan and Hong Kong. The Complainant makes extensive use of the mark and uses it as part of extensive advertising of its goods.
The disputed domain name is identical to the Complainant’s brand. The contested domain name was registered on November 16, 2001 after the Complainant’s trademark registration. It provides links to third-party commercial sites grouped under headings such as “Sponsored Results for Archipelago Botanical”, “Archipelago Botanicals Candle and “Archipelago Botanicals Store”. Consumers are likely to believe that any domain name incorporating the Complainant’s trademark name is associated with the Complainant, particularly when they feature candles, bath oil, perfumes and body lotions of the type made by the Complainant. The Complainant has received complaints from customers confused by the Respondent’s website who thought that it was associated with the Complainant.
The Respondent has no rights to any trademark consisting of the term “Archipelago Botanicals” in any country and has not been commonly known by the domain name. The Respondent does not have, and has never had any connection with the Complainant.
The Respondent is using the domain name to divert the Complainant’s customers to its competitors, disrupt the Complainant’s business and tarnish or dilute the value of the Complainant’s trademarks. The Respondent registered the domain name knowing that the Complainant held rights in and to its trademark. The Complainant uses its trademark on its website located at “www.archipelago-usa.com”. The domain name in issue is being used to attract, for commercial gain internet users to a website by creating a likelihood of confusion with the Complainant’s registered trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. This is being done to direct the Complainant’s customers to an unauthorized website where the Respondent provides links to websites featuring personal products including bath oil, fragrances and candles including some of the Complainant’s competitors and including sponsored links. The Complainant is presumably paid on a pay-per-click basis.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it 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 domain name in issue consists of the registered trademark referred to above without the breaks between words and with the addition of “.com”. Since the removal of the intervals between the words and the use of an Internet suffix of this type is necessary to create a domain name, the domain name is virtually identical but in any case confusingly similar to the trademark concerned. In a signed statement dated February 15, 2007, and annexed to the Complaint, David Klass, stated to be a member of the Complainant organization, says that he has received complaints from the Complainant’s customers who believe that the domain name in issue is confusingly similar to the trademark concerned.
The registration document for the trademark 2,411,879 does not mention the Complainant’s name. It would have been useful if the Complainant had explained how it comes now to claim ownership of the trademark or clear evidence to support this. It appears, though, from the 2006 trademark application and Mr. Klass’s statement that the Complainant asserts ownership rights to that trademark. Mr. Klass states in particular that the Complainant, through its licensee Archipelago, Inc, uses the brand ARCHIPELAGO BOTANICALS around the world in connection with a line of personal products including the aforementioned bath oil and fragrances. Its claims are uncontradicted by the Respondent and supported by the Complainant’s applications to register the mark in the United States and America and elsewhere and its apparent continuing use of the trademark.
For all these reasons, the Panel concludes that the domain name is confusingly similar to the trademark ARCHIPELAGO BOTANICALS in which the Complainant on balance has rights.
B. Rights or Legitimate Interests
The Respondent is not called “Archipelago” “Botanicals” or anything similar and does not appear to trade under that name. There is no evidence that the Complainant has authorized the Respondent to use any of its trademarks or that the Respondent has ever asserted any rights or legitimate interest in the domain name. For these reasons, and in view of the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interest in respect of the domain name.
C. Registered and Used in Bad Faith
The domain name was registered after the registration of the trademark ARCHIPELAGO BOTANICALS. At the time of this decision, it was not possible to view the website to which the domain name in dispute resolves. The Complainant has produced a printout of the website. It appears to be marketing Archipelago products by means of links to other websites. One link is to “www.xanadus.com”. That site markets a combination of the Complainants’ products and those apparently belonging to its competitors.
The combination of words “archipelago” and the misspelt and ungrammatical word “botanicals” (it would if used in a descriptive dictionary sense be singular and spelt with two “n”s) is unusual and possibly unique. When someone registers a domain name for no obvious reason which uses the words in question in the same way as a registered trademark, it is apparent that the choice of the domain name has probably been made in full knowledge of the rights of the registered mark. A likely objective is to use the trademark to attract customers familiar with the mark and interested in the products marketed there.
The website to which the disputed domain name previously resolved appears to be one by which the site owner earns revenue by ‘click-throughs’ to the domain names listed there. Through a number of these, customers could apparently purchase products competing with the Complainant. The then-registrant of the domain name was presumably hoping to use the Complainant’s trademark to divert customers to websites that market products and services offered by the Complainant’s competitors and generally earn money from the Complainant’s trademark in this way.
As the Panel said, in Banca di Roma S.p.A. v. Unasi Inc. a/k/a Domaincar, WIPO Case No. D2006-0068:
“The Respondent is linking the disputed domain name to a portal site offering sponsored links. There, Internet users have access to a variety of goods and services, among them websites of the Complainant’s competitors. As described by the panelist in Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584, such websites offer a revenue program which pays domain name owners (in the particular case) “50% of all revenues generated from searches, popunders, popups, and exit popups” in respect of users directed to its website through the participants domain name.
This leads the Panel to the conclusion that the Respondent registered the domain name at issue to divert Internet users seeking information about the Complainant’s products to a portal site offering sponsored links and to share in revenues obtained from the diverted traffic. Even if internet users would realize that the Respondent’s website is not connected with the trademark owner, the Respondent is liable to profit from their initial confusion, since they may still be tempted to click on sponsored links. In many previous UDRP decisions, in some of them the Respondent was involved as a Respondent party as well, such exploitation of trademarks to obtain click-through commissions from the diversion of internet users was held of use in bad faith. In the absence of any reply of the Respondent, the Panel can make a reasonable inference that the Respondent’s website generates revenue for the Respondent in that manner.”
Registering a domain name in order to use someone else’s trademarks, associations and reputation to attract Internet users to a website in order to make money is itself bad faith. Paragraph 4(b)(iv) of the Policy describes as evidence of bad faith material showing that “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.” Subject to a point mentioned below, this particular case seems to fit that exactly.
Using someone else’s trademark to divert customers looking for the Complainant’s products and services to a website through which they can purchase products or services of the Complainant’s competitors is also evidence of bad faith.
Shortly before the Complaint was filed, the original registrant seems to have removed the domain name. The original registrar released the domain name. Apparently, the current owner is the Respondent. However the facts and circumstances surrounding the apparent registration or acquisition of the disputed domain name by the Respondent are murky.
The Panel notes that the disputed domain name appears to have been cancelled by the previous registrant in response to the Complaint, after which it was apparently registered by the Respondent with a different registrar, at the approximate time that the Complainant itself was unsuccessfully attempting to secure the registration of the domain name for itself. This may be a coincidence. However, on the balance of probabilities and in the absence of any response in this case, the more likely explanation is that the Respondent has acquired the domain name in bad faith. At the very least, she knows that the domain name is likely to represent the trademark of the Complainant.
In the present case, the Panel is satisfied on balance that the Respondent was acting in bad faith with a view to exploiting the Complainant’s trademark. The critical element in the Panel’s mind is that the Respondent, without apparent rights or clearly established interests of its own, chose to acquire this particular and highly distinctive domain name in what would appear to be rather ambiguous circumstances, in which it very likely knew, or at least should have known, of the Complainant’s ARCHIPELAGO BOTOTANICALS mark. The Panel does not believe that the acquisition of such a domain name is likely to have been a co-incidence.
Although the disputed domain name appears to be currently not in use, particularly in view of the Complainant’s registered mark and the Respondent’s apparent lack of rights, it is difficult to conceive of any use of the disputed domain name by the Respondent that in the circumstances would not be breach the Policy.
For all these reasons, the Panel concludes that the disputed domain name has been both registered and used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <archipelagobotanicals.com> be transferred to the Complainant.
Dated: July 3, 2007