Complainant is St. Tropez Acquisition Co. Limited of Beeston, United Kingdom of Great Britain and Northern Ireland, represented by Browne Jacobson LLP, United Kingdom.
Respondent appears to act under two different aliases: AnonymousSpeech LLC, of Nakano-ku, Tokyo-to, Japan (an entity providing privacy shield services; the privacy shield operator has not lifted the shield and has not disclosed the identity of the underlying real party in interest), and Global House Inc., of Roseau Valley, Dominica (which, for the reasons discussed below, appears to be the real party in interest who has registered both of the Domain Names at issue).
The disputed domain names <st-tropez-teeth-whitening.com> and
<st-tropez-weight-loss.com> (the “Domain Names”), are registered with Wild West Domains, Inc., and eNom, respectively.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 23, 2009. On December 28, 2009, the Center transmitted by email to eNom and Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain names. On December 28, and December 29, 2009, eNom and Wild West Domains, Inc. respectively transmitted by email to the Center their verification responses, disclosing registrant and contact information for the disputed domain names, which, with respect to the
<st-tropez-weight-loss.com> domain name, 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 because it identified a respondent different from the registrant disclosed in one of the registrar verifications, Complainant filed an amendment to the Complaint on January 14, 2010. 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” 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 Respondent of the Complaint, and the proceedings commenced on January 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2010.
Representatives of Anonymous Speech sent informal email communications to the Center on January 18, January 22, and January 27, 2010. However, no formal Response was submitted.
The Center appointed David H. Bernstein as the sole panelist in this matter on February 17, 2010. 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.
A number of procedural issues have arisen in this case, including whether the Domain Names have the same beneficial owner, and whether Respondent was properly given notice. The Panel addresses these procedural matters, below. Because of the procedural complexities in this case, the Panel extended the date for decision to March 13, 2010.
At the time the Complaint was filed, on December 23, 2009, publicly available WHOIS information indicated that both Domain Names were owned by Respondent Global House, Inc. Subsequently, ownership of the registration for the
<st-tropez-weight-loss.com> Domain Name was transferred to Anonymous Speech, LLC, a privacy service based in Japan which offers anonymous domain name registration. It is not clear whether the registrar or Respondent already had notice of the filing of this proceeding at the time it allowed the ownership of the Domain Name to be transferred. Had it been on notice, the registrar should have implemented a “registrar lock” and prevented cyber flight of the Domain Name to a new party.
Anonymous speech's CEO indicated to the Center by email on January 27, 2010 that it is not the beneficial owner of <st-tropez-weight-loss.com>. Anonymous Speech did not, however, disclose the identity of the beneficial owner.
Because the Policy generally permits only a single Respondent in each proceeding, the Panel must determine whether the two Domain Name registrations at issue are owned by the same party or are owned by two different parties. In other words, the question is whether the undisclosed beneficial owner of the Anonymous Speech registration is Global House, Inc. or a party sufficiently related to Global House, Inc. such that it is appropriate for the Panel to consider the challenge to both of these Domain Names in this single proceeding.
The Panel's task has been significantly complicated by the decision by the registrant of <st-tropez-weight-loss.com> to use a privacy shield service to block the Panel's access to information concerning the identity of the beneficial owner.
To the extent that there is some uncertainty surrounding the identity of the registrant of <st-tropez-weight-loss.com>, that is a problem wholly of the registrant's making. Because the information about its identity is within the registrant's exclusive control, and because it has made the tactical decision to register the Domain Name in this manner designed to shield its identity from Complainant, the Registrar, the Center and the Panel, the Panel concludes that it would be inequitable for the registrant to profit (for example, by requiring Complainant to file a new challenge, thereby resulting in additional legal and filing fees and a delay in the resolution of its challenge) from its own tactical decision. Accordingly, the Panel concludes that all reasonable inferences should be decided in Complainant's favor.
Complainant has submitted documentary evidence showing that, as of the date the Complaint was filed, Global House, Inc. was the owner of the
<st-tropez-weight-loss.com> Domain Name. Although registration of the Domain Name was transferred shortly thereafter to Anonymous Speech, given that Anonymous Speech is a privacy service and has confirmed that it is merely listed as the registrant for the benefit of an undisclosed principal, it is a fair inference to conclude that Global House, Inc. is the undisclosed principal behind this registration. Further supporting that conclusion are that, as of January 14, 2010 (after the transfer of the Domain Name to Anonymous Speech) the website to which the Domain Name resolves continued to advertise the St. Tropez Weight Loss plan and continued to indicate that St. Tropez Weight Loss is a trademark of Global House, Inc.
For all of these reasons, and given the absence of any information or evidence offered by the Respondent to the contrary, the Panel concludes that Global House, Inc. is in fact the real party in interest behind the Domain Name <st-tropez-weight-loss.com>. The Panel thus concludes that, despite the different owners identified in the registrars' verifications, it is appropriate to treat both Domain Names as being owned by the same registrant and that it is appropriate to address Complainant's challenge to these two Domain Names in this single proceeding.
A second procedural issue in this case is the question of whether the Center fulfilled its obligation to notify Respondent of this proceeding. Because Respondent defaulted, the Panel believes it appropriate to carefully review the record to ensure that Respondent was at least given a fair opportunity to submit a response. See Sitcom Technology Consulting Inc. v. Solarium Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792; Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415.
Pursuant to the Rules, the Center attempted to notify Respondent of the Complaint by email, fax and courier using all contact information disclosed in the registrar verifications, in the publicly available WhoIs records, and on any websites to which the Domain Names resolved. Although many of those efforts failed because the contact information provided was not accurate, the Center did receive several email responses from AnonymousSpeech, which does show that AnonymousSpeech did receive the Center's emailed notifications.
In one of the responses, AnonymousSpeech's CEO, Mr. Weber, indicated that, at the time the notification was sent, he was not in Japan (where the Center had sent the hard copy Written Notice of the Complaint, pursuant to the information in the registrar verification), so he had asked the courier (UPS) to forward the materials to him in Switzerland. The Center asked Mr. Weber to provide an address in Switzerland to which it could send the case file directly. Although representatives of AnonymousSpeech responded to that email, neither they nor Mr. Weber provided the requested address. Ultimately, UPS indicated that it was unable to deliver the package because the address provided was not correct.
In sum, it appears that the Respondent never received the hard copy Written Notice of the Complaint, nor did any of the efforts to send the Written Notice of the Complaint by fax succeed. Nevertheless, it is clear that AnonymousSpeech received the emailed copy of the notification. Thus, at the minimum, it is clear that AnonymousSpeech received notification of the commencement of this proceeding.
Of course, the Panel is unable to determine whether AnonymousSpeech sent the information about this proceeding on to the actual owner of the Domain Name. That is always a risk in cases involving a privacy shield. In such cases, though, all the Center can do is notify the privacy shield operator; if the operator fails to give notice to its client, that is a risk that the Domain Name registrant must bear because it made the decision to use a privacy shield in the first place.
Finally, the Panel notes that the Center also sent the hard copy Written Notice by courier to Global House, Inc. at its Dominica address, and UPS has confirmed that the package was delivered on January 25, 2010.
For all these reasons, the Panel finds that the Center properly discharged its obligation to provide fair notice to Respondent under paragraph 2(a) of the Rules. SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792.
Complainant sells self-tanning products. Complainant owns seven trademarks for ST. TROPEZ including two trademarks registered in the United Kingdom in 1998 and 1999, three trademarks registered in the United States between 2005 and 2009, and two Community Trade Marks (“CTM”) registered in 1999 and 2009, respectively.
Respondent Global House, Inc. is a company registered in Dominica. It applied for a CTM registration for the mark “St. Tropez Weight Loss” on March 16, 2009; Complainant filed an opposition against that application on October 27, 2009.
The domain name <st-tropez-weight-loss.com> was registered with eNom on March 15, 2009. The domain name <st-tropez-teeth-whitening.com> was registered with Wild West Domains, Inc. on May 20, 2009.
Complainant alleges that <st-tropez-teeth-whitening.com> and
<st-tropez-weight-loss.com> are identical or confusingly similar to its registered trademark, ST. TROPEZ. Complainant states that Respondent has wholly incorporated Complainant's trademarks into the Domain Names, and that both Domain Names are descriptive of beauty products and services, the market in which Complainant operates. Complainant further alleges that it has a strong reputation in the beauty products market. It asserts that Respondent intentionally used an identical or confusingly similar trademark, as evidenced by Respondent's use of a font for the ST. TROPEZ mark on its website that is similar to the font used by Complainant for its mark.
Complainant also alleges that Respondent has no rights or legitimate interests in the Domain Names. To the best of Complainant's knowledge, Respondent has never been in the beauty products market, has not traded under the ST. TROPEZ name, and has no registered rights in the name.
Finally, Complainant alleges that the Domain Names were registered in bad faith. Complainant asserts that Respondent is taking advantage of Complainant's strong reputation in the beauty products market, and is intentionally creating a likelihood of confusion to capitalize on this reputation. As evidence of Respondent's bad faith, Complainant states that the font used for the ST. TROPEZ mark on
<st-tropez-weight-loss.com> is intentionally similar to the font used by Complainant for its brand name. Complainant also alleges that <st-tropez-teeth-whitening.com> has never been used, and that the purpose of the site, and the intention of Respondent in registering it, is unclear.
Respondent has not submitted a reply to the Complaint or amended Complaint. Because of Respondent's default, the Panel may accept as true the factual allegations stated within the Complaint and amended Complaint, and may draw appropriate inferences therefrom. Worldwide Pants Inc. v. VisionLink Communications Group, Inc., WIPO Case No. D2008-1796 (February 10, 2009); see Rule 5(e) (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”).
Pursuant to paragraph 4(a) of the Policy, to obtain transfer of the Domain Names, Complainant must prove by a preponderance of the evidence that (i) Respondent's Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names have been registered and are being used in bad faith.
Complainant has established that it has rights in the ST. TROPEZ trademark by virtue of its several trademark registrations and its continuous use of the mark with respect to its sunless tanning products since at least 1995. The Domain Names are confusingly similar to Complainant's mark because both <st-tropez-weight-loss.com> and
<st-tropez-teeth-whitening.com> wholly incorporate Complainant's trademark. Although that alone is sufficient to establish that the Domain Names are confusingly similar to Complainant's trademark, the Panel also notes that the additional words in the Domain Names, “weight loss” and “teeth whitening,” are descriptive of products in the health and beauty field, the same field in which Complainant has trademarks and conducts its business. The Panel thus concludes that the Domain Names are confusingly similar to a mark in which Complainant has rights.
Complainant has submitted printouts of the <st-tropez-weight-loss.com> website which show that Respondent appears to be offering diet pills for sale under the ST. TROPEZ WEIGHT LOSS trademark. Moreover, as noted above, Respondent has applied to register the trademark ST. TROPEZ WEIGHT LOSS as a CTM.
Despite this facial evidence of a legitimate interest, Complainant has submitted compelling evidence that Respondent is not using this domain name in connection with a bona fide offering of goods.
First, Complainant alleges that this use of the ST. TROPEZ trademark is an infringing use, which is why Complainant has opposed Respondent's CTM application. To the extent the use is infringing, it would not be a “bona fide” use.
Second, Complainant has submitted evidence, through a report from its private investigators, showing that Respondent's website is not what it appears to be. Among the suspicious activities uncovered by the investigator are the following:
- Global House, Inc.'s phone line, which is provided as contact information on <st-tropez-weight-loss.com>, has no voice mail or answering service attached to it, and it appears that nobody answers the line, even during regular business hours. When the investigator finally got through to the number, it was answered by a woman who claimed not to know anything about St. Tropez Weight Loss, Global House, Inc. or its principal, Mr. Halls.
- The online Customer Service link provided on <st-tropez-weight-loss.com> led to an error message stating, “Service is not available at this time.”
- The first time the investigator placed an order for a weight-loss product on <st-tropez-weight-loss.com>, he received an email that the product was out of stock for ten days, and that he should order another product instead. The investigator found it suspicious that the website did not instead suggest that he should wait the ten days for the company to re-stock the product.
- When the investigator later successfully ordered a product, the purchase appeared on his credit card as being from a third-party organization in Spain. The investigator finally received his purchase, two bottles of pills, without any documentation or return address. When he attempted to contact the company by saying that there was a problem with his order, he received a second package, printed with a P.O. Box at Gatwick Airport as a return address. Upon investigation, he determined that the address was a mail forwarding service for persons living in Spain and Gibraltar.
In sum, the investigator concluded that Global House, Inc. and its
<st-tropez-weight-loss.com> Domain Name appear to be a “house of cards operation.”
In light of this evidence, the Panel finds that Complainant has made a prima facie showing that Respondent is not engaged in the bona fide sale of weight loss products under the trademark ST. TROPEZ WEIGHT LOSS, nor does it otherwise have rights or a legitimate interest in this Domain Name. The burden of production thus shifts to Respondent to come forward with some evidence showing that it does, in fact, have rights in or a legitimate interest to this Domain Name (though the burden of proof remains on Complainant throughout). Because Respondent has defaulted, Respondent has failed to meet that burden and Complainant has thus prevailed in establishing, for purposes of the Policy, that Respondent lacks rights to or a legitimate interest in this Domain Name.
As to the <st-tropez-teeth-whitening.com> Domain Name, Complainant has shown that it does not resolve to a functioning webpage, and there is no evidence that it has been a functioning webpage in the past. Given that evidence, and the evidence of Respondent's suspicious activities with regard to the <st-tropez-weight-loss.com> Domain Name and website, the Panel finds that Complainant has also sustained its burden of showing that Respondent lacks rights to or a legitimate interest in this Domain Name.
The evidence discussed above supports the inference that Respondent registered these Domain Names, and is using the <st-tropez-weight-loss.com>, to take advantage of the goodwill of the ST. TROPEZ trademark and to confuse consumers into believing that these domain names and the “www.st-tropez-weight-loss.com” website have some connection or affiliation with Complainant. Although weight loss and teeth whitening products are not the same as the products sold by Complainant, they are sufficiently related given that they are within the broader health and beauty field. That confusion is exacerbated by Respondent's use of a font for the ST. TROPEZ mark that is similar to the font used by Complainant. This evidence is itself sufficient to support a finding of bad faith registration and use.
Since the commencement of this proceeding, Respondent has removed the prior content from the “www.st-tropez-weight-loss.com” website and replaced it with a pay-per-click (“PPC”) parking page. This appears to be a further effort to profit from Complainant's ST. TROPEZ trademark, and is thus further evidence of Respondent's bad faith. mVisible Technologies, Inc., v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel thus concludes that Complainant has established that Respondent registered and used these Domain Names in bad faith.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Names <st-tropez-teeth-whitening.com> and <st-tropez-weight-loss.com> be transferred to Complainant.
David H. Bernstein
Dated: March 13, 2010