Complainants are Nectar International Limited and Desmo Enterprises Limited of Carrickfergus, United Kingdom of Great Britain and Northern Ireland, represented by the law firm ANSONS, United Kingdom of Great Britain and Northern Ireland.
Respondent is Arej Net, Arej of Jeddah, Saudi Arabia.
The disputed domain name <nectarbeauty.net> is registered with Dotster, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2009. On July 3, 2009, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On July 6, 2009, Dotster, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainants filed an Amended Complaint on July 16, 2009. The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2009. Respondent did not submit any response; accordingly the Center notified Respondent's default on August 13, 2009.
The Center appointed Richard G. Lyon as the sole panelist in this matter on August 17, 2009. The Panel finds that it was properly constituted and has jurisdiction over this proceeding.1 The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainants are companies based in Northern Ireland, United Kingdom of Great Britain and Northern Ireland. They both own a trademark for NECTAR, the one duly registered in the European Community being owned by Nectar International Limited and the one duly registered in the United Kingdom being owned by Desmo Enterprises Limited. Complainant Desmo Enterprises Limited also owns several design trademarks that are registered in the European Community. The two Complainants jointly use these marks to sell beauty products. Complainants offer no evidence of brick-and-mortar sales but their website at <nectarinternational.co.uk> does offer for sale numerous skin, body, hair, and other beauty products.
Respondent is based in Jeddah, Saudi Arabia. A screenshot of a website at the disputed domain name dated June 30, 2009 includes on its homepage at least one of the design marks owned by Complainants next to the word Nectar and includes the following text:
“Our history & origins. The wholesome beauty of the Irish landscape. Its freshness & its changeability. The vibrancy of the Irish people, their individuality & their .....read more About Us
Natural Prouducts; Our history & origins. The wholesome beauty The vibrancy of the Irish people, their individuality & their..... read more About Us.”
At this website several products are offered that appear to be similar to those offered by Complainants at their website.
Respondent appears to be connected to a Saudi Arabian company with which one of the Complainants is presently involved in trademark litigation in Saudi Arabia.
Complainant contends as follows:
Complainants hold rights in NECTAR by reason of their United Kingdom and European Community registered trademarks. The disputed domain name is identical but for the addition of the word beauty, which word emphasizes confusing similarity with Complainant's mark because it describes products sold by Complainant.
The only use to which Respondent has put the disputed domain name is not legitimate under the Policy. Respondent has created a website that incorporates without permission Complainants' trademark and logo and has used it misleadingly to divert consumers from Complainants to Respondent. Complainants furnish a comparison of the parties' respective websites showing exact copying of text as well as unauthorized use of Complainants' marks on Respondent's website and assert that such conduct constitutes trademark and copyright infringement. Respondent's website points Internet users to a postal address in London, England that according to official records does not exist. These same facts demonstrate Respondent's bad faith in registration and use of the disputed domain name.
Complainants further allege that the company that apparently owns Respondent is controlled by a Saudi resident who is a stockholder of one Complainant and at one time served as a member of its board of directors. This man allegedly was removed from his board seat because of unwarranted competition of his Saudi companies against Complainants.
Respondent did not reply to the Complainant's contentions.
While paragraph 4(a) of the Policy has three subparts, a Complainant must in effect establish five matters to prevail in a Policy proceeding: ownership of a mark, identity or confusing similarity of the disputed domain name to that mark, Respondent's lack of rights or legitimate interest in the disputed domain name, registration of the disputed domain name in bad faith, and use of the disputed domain name in bad faith. Complainants' evidence summarized above clearly demonstrates the first, second, and fifth of these elements. This proceeding turns on which party bears the burden of proof on two issues: whether Respondent's copycat website was ever authorized and whether Respondent registered the disputed domain name in bad faith.
Complainant has made its prima facie case that Respondent's use was not legitimate, though more evidence would have been helpful, there being no indication that Respondent was commonly known by the word “nectar”, or has been authorized by Complainant. Inclusion of misleading information on its website suggests the contrary (and as noted suffices to demonstrate use of the disputed domain name in bad faith). Under well-settled Policy precedent the burden of production therefore shifts to Respondent to demonstrate a right or legitimate interest. Respondent has stood silent, so paragraph 4(a)(ii) of the Policy is satisfied.
The dearth of evidence provided in this case makes it difficult to determine if Respondent registered the disputed domain name with disruption of Complainants in mind. Complainant relies principally upon its allegations that Respondent's 2009 use of the disputed domain name and the content of Respondent's website constitute copyright and trademark infringement. This Panel is not charged with making any such finding and (as is true in most cases) lacks the ability to do so in an abbreviated Policy proceeding. Whether or not Respondent has infringed Complainant's intellectual property rights, moreover, is not necessarily determinative of whether Complainants have established registration in bad faith by Respondent. Not all infringements ipso facto constitute bad faith, and bad faith is often proven without proving infringement.
More to the point, Complainants' only evidence comes from 2009. According to the WhoIs database, the disputed domain name was created in December 2007, and in the absence of any allegation or evidence to the contrary the Panel will presume that this is Respondent's date of registration. As Complainants have provided no direct evidence relating to bad faith at that time, it is left to determine whether the Panel may infer bad faith in registration from Respondent's subsequent use in bad faith. As this Panel stated in Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383, there are many instances in which a Panel may be justified in making such an inference based upon subsequent bad faith use:
“Panelists' inferring factual or legal conclusions from complainants' unsupported allegations coupled with no response are occasionally necessary (and appropriate), because matters involving a respondent's motive, intent, purpose, and other subjective factors determinative under Paragraphs 4(a)(ii) and 4(a)(iii) will not always be susceptible of direct proof, at least without the discovery and cross-examination that are unavailable to a complainant or a panelist in proceedings under the Policy. A complainant must often prove such matters with a prima facie showing that, when unchallenged, a panelist can accept.”
The Panel does not believe that Complainants have done so in this proceeding. This is not a case in which there is no conceivable reason other than interference with Complainants why Respondent may have registered the disputed domain name in 2007. Respondent's principal was then a stockholder of a Complainant. He may then also have been a member of that Complainant's governing board. He sells beauty products in his home country. The Panel finds it equally likely that his selling Complainants' products was once contemplated or that an investor in and director of one of Complainants had some legitimate reason to register the disputed domain name in 2007, as that registration was possibly made with mayhem in mind.
Furthermore, as in Brooke Bollea, supra, it would have been an easy matter for Complainants to provide evidence (if it exists) of friction between the parties in 2007 or other facts from which the Panel might infer registration in bad faith. Even Complainants' allegations do not address any events prior to 2009. There is on the provided record no basis for an inference of bad faith in 2007.
The Panel emphasizes that he is resolving this matter based upon Complainants' failure of proof and not making any finding of legitimacy. Nothing in this Decision is binding upon the parties in any litigation, present or future, between them.
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Dated: August 19, 2009
1 In any default case the Panel must review the Center's efforts to notify the Complaint to ensure the Center's compliance with paragraphs 2(a) and 3(a) of the Rules. Even though the Center was unable to effect delivery by email or post-courier, the Panel is satisfied that the Center “employed … the methods” and “discharged [its] responsibility” under these Rules by attempting delivery to the email and postal addresses set forth in the registrar's contact details. Any failure to achieve actual notice is thus solely the fault of Respondent for not keeping such information current.