The Complainant is St. Ives Laboratories, Inc. of Illinois, United States of America, represented by Latimer & Mayberry IP Law LP, United States of America (the “U.S.”).
The Respondent is Lu Lan of Shanghai, the People's Republic of China.
The disputed domain name <stivess.com> is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2009. On November 10, 2009, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 11, 2009, Above.com, Inc. 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 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 November 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 4, 2009.
The Center appointed Jane Lambert as the sole panelist in this matter on December 10, 2009. The Panel finds that she 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.
The Complainant is a subsidiary of the Alberto-Culver Company which makes and sells hair and skin care products, spices and seasonings and anti-static spray. The Alberto-Culver group has a turnover of USD1.5 billion and 2,700 employees across the world.
The group's products are sold under a number of brands one of which is St. Ives. Neither the Complainant nor the websites of the Complainant or its holding company discloses sales or profits of that company or of goods sold under the St. Ives brand.
There are several towns and villages in the United Kingdom of Great Britain and Northern Ireland called St. Ives, notably a fashionable seaside resort in Cornwall which has attracted many famous artists over the last 70 years including Barbara Hepworth, and the market town in Huntingdonshire which once held one of the most important fairs of medieval Europe.
There appear to be several saints called Ives including Ivo or Yves of Kermartin in Brittany who is the patron saint of lawyers.
The Complainant has nevertheless managed to develop a considerable reputation and goodwill in the sign ST. IVES in relation to face and hair care products such as cleansers, scrubs, moisturizers, shampoos and conditioners through extensive sales and marketing. The Complainant has registered or applied to register the words ST. IVES simpliciter, in stylized form or in combination with other words such as “Swiss Formula”, as trademarks for skin and hair care products in class 3 in a number of countries including the U.S., European Union and China.
One of those registrations is Community Trade Mark No. 149880 under which ST. IVES is registered as a word mark for “cosmetic and toiletry products, hair care products, shampoos, conditioners, hair sprays, mousses, gels, hair dyes and waves, skin care creams, lotions and cleaning products, deodorants for personal use” in class 3.
The Complainant markets its goods in the U.S. and elsewhere through websites bearing generic top level domains, such as <stives.com>, and in Canada and New Zealand through websites bearing country code top level domains <stives.ca> and <stives.co.nz> respectively.
Very little is known of the Respondent beyond the fact that the Respondent appears to be located in Shanghai and appears to hold a portfolio of some 66,000 domain names including <australiapost.com> and <yotubt.com>. When the characters <stivess.com> are keyed into a browser the name appears on a landing page with several columns of sponsored links and searches.
The Complainant requests a transfer of the disputed domain name on the grounds that:
- The Complainant has significant trademark rights in the trademark ST. IVES.
- The Respondent's domain name is confusingly similar to the Complainant's ST. IVES mark.
- The Respondent has no rights to the ST. IVES mark or any variations thereof and has registered and is using the disputed domain name in bad faith.
In support of its last contention, the Complainant alleges that the Respondent registered the disputed domain name knowing that it did not own the trademark, that it parks the name on a landing page with sponsored links or searches from which it no doubt derives revenue and that it has a portfolio of 66,000 other domain names including those mentioned in paragraph 4 above.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove that each of these three elements is present.
The Complainant has provided evidence of numerous trademark registrations for the ST. IVES mark, but probably the most relevant of these, for the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, is Community trademark number 149880 mentioned in paragraph 4 above. The disputed domain name differs from the registered mark in the following respects:
- The domain name omits the full stop after the conventional abbreviation for “Saint”.
- It also omits the space between the words “Saint” and “Ives”.
- There is an extra “s” at the end of the word “Ives”.
If this were a claim for infringement of the Complainant's Community trademark by the use of the disputed domain name it would be necessary to consider whether the similarity of the domain name with the registered mark and the identity or similarity of their goods or services is such as to give rise to a likelihood of confusion on the part of the public, including the likelihood of association between the textual string which comprises the domain name sign and the trademark. If, for example, bottles of moisturizer marked STIVESS were to appear on supermarket shelves there is very little danger that consumers would associate STIVESS with ST. IVES or that they would be induced to buy STIVESS moisturizer in the belief that it emanated from the Complainant.
However, that is not the mischief contemplated by the Policy. ICANN adopted the UDRP in 1999 to combat “cyber-squatting”, that is to say the practice of registering a domain name that Internet users might associate with a particular trademark and then ransoming that domain name to the trademark owner. Paragraph 4(a)(i) of the Policy requires identity or confusing similarity between the trademark and the disputed domain name. There is no reference in paragraph 4(a)(i) to confusion on the part of the public, and nothing in that paragraph requires a likelihood of association of the disputed domain name with the Complainant's trademark. Thus, the test of “confusing similarity” for the purpose of paragraph 4(a)(i) must be different from the test for trademark infringement because the comparison has to be made not between two marks and two sets of goods or services but between a trademark and a domain name, these are two very different tests. In practical terms, that means that the appropriate test for confusing similarity is a literal comparison of the disputed domain name and the Complainant's mark. See MBS Consulting SPA v. mbsconsul inc. / web master, WIPO Case No. D2009-1505.
Additionally, the Complainant has registered and actually uses <stives.com> as a domain name. The disputed domain name differs from that domain name in that it contains an extra “s”. Internet users in a hurry might easily mistype that address and almost certainly do.
This Panel has often held (as, indeed, have other panels) that a domain name that could result from a typographical error or memory or concentration lapse is confusingly similar to the Complainant's trademark for the purpose of paragraph 4(a)(i). Accordingly, she finds the first element to be present.
Paragraph 4(c) of the Policy provides:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
There is no evidence that any of the above circumstances apply. Nor is there evidence of any other circumstance that would indicate that the Respondent has rights or a legitimate interest in the disputed domain name. The Complainant has put forth a prima facia case that the Respondent lacks such rights or legitimate interests, which the Respondent has not rebutted. Thus, the Panel finds that the second element is present.
Paragraph 4(b) of the Policy provides:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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.”
The Complainant has submitted that “it is inescapable that Respondent was aware of Complainant's rights in St. Ives at the time Respondent registered its domain name.” The Panel is not persuaded that that is “inescapably” so based partly on the alleged distinctiveness of the mark (which given the wide use of the term St. Ives as a geographic descriptor does not strike the Panel as particularly high) . The Complainant's mark is less distinctive than other marks in its holding company's portfolio largely because it shares the name with others.
The Panel is more impressed with the argument that the Respondent has engaged in a pattern of cyber-squatting but the Complainant has not produced any evidence to that effect.
The Complainant's best point is that the disputed domain name resolves to a pay-per-click site. The obvious purpose of such sites is to generate revenue, which of course is a “commercial gain” within the meaning of paragraph 4(b)(iv) of the Policy. Having already found that the disputed domain name is confusingly similar to at least one of the Complainant's marks, the Panel is satisfied that the Respondent has created a likelihood of confusion with the Complainant's mark as to the location of the Complainant's products or services on the Respondent's website and location. Accordingly the Panel finds that the third element of paragraph 4(a) of the Policy is met.
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 <stivess.com> be transferred to the Complainant.
Dated: December 24, 2009