WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Danshar (1963) Ltd. v. Joey Gilbert/ Daisy Li
Case No. D2011-2304
1. The Parties
The Complainant is Danshar (1963) Ltd. of Rosh-Haayin, Israel, represented by Bodner Flom, Israel.
The Respondents is Joey Gilbert of Woodmere, United States of America, represented by Lewis & Lin, LLC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mineralcare.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint naming Joey Gilbert (the first named Respondent) and Daisy Li (the second named Respondent) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2011. On December 29, 2011, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On December 30, 2011, Network Solutions, LLC transmitted by email to the Center its verification response confirming that:
(a) the first named Respondent is listed as the registrant;
(b) the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies to the disputed domain name;
(c) English is the language of the registration agreement; and
(d) providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of 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 January 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2012. The Response was filed with the Center on February 13, 2012.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 20, 2012. 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
The Complainant describes itself as one of the leading cosmetics/beauty entities in Israel, which has been engaged in making and selling cosmetics and other beauty products under various brands for over fifty years.
It is the owner of a number of registered trademarks featuring MINERAL CARE, mainly in International Class 3. Many of the trademarks appear to be labels and feature the words “mineral” and “care” with pictorial elements or in stylized form. However, Benelux trademark No. 558833 and Australian trademark No. 637756 are both for MINERAL CARE alone. The Benelux trademark was registered from June 1, 1995; the Australian trademark from July 1, 1996.
Currently, the disputed domain name resolves to a website at <deadseapavilion.com> from which are offered for sale goods competing with the Complainant’s MINERAL CARE products. The second named Respondent is the registrant of that domain name.
Although the Complaint does not expressly disclose this, it appears that the Complainant acquired the MINERAL CARE business in or around late 2009.
According to the first named Respondent, the Complainant’s predecessor in title appointed the first named Respondent’s company as its authorised distributor for the United States of America (“USA”). In connection with that appointment, the first named Respondent registered the disputed domain name and used it with the knowledge and approval of the Complainant’s predecessor in title for more than 15 years.
After the Complainant acquired the MINERAL CARE business, it demanded that the first named Respondent transfer the disputed domain name to the Complainant. The Complainant also ceased supplying MINERAL CARE products to the first named Respondent’s company.
Following the cessation of supply from the Complainant, the first named Respondent’s company continued selling MINERAL CARE products from its existing stocks and by sourcing it from other distributors. When these stocks dried up, however, the first named Respondent started offering for sale the second named Respondent’s competing Dead Sea Pavilion products and arranged for the disputed domain name to redirect to the second named Respondent’s website.
According to the Registrar’s verification response, the disputed domain name was registered on January 2, 1997.
5. Discussion and Findings
A. Procedural Issue: Respondent Identity
A preliminary issue is the identity of the respondent to this proceeding.
Paragraph 1 of the Rules defines the respondent to a complaint as “the holder of a domain-name registration against which a complaint is initiated.”
No other rules formally permit joinder of additional respondents. The Panel notes, however, that paragraphs 3(c) and 10(e) of the Rules have been interpreted by panels as permitting in some cases the joinder of disputes about multiple domain names registered in the names of different formal respondents. See e.g. Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and PHE, Inc. v. Aisha Haider, WIPO Case No. D2007-0992.
The first named Respondent is the person whom the Registrar has confirmed is the holder of the disputed domain name registration. The second named Respondent is not formally recorded as having an interest in the registration of the disputed domain name and, other than the redirection of the disputed domain name to the second named Respondent’s website, there does not appear to be a basis for inferring that she claims some sort of interest in the disputed domain name. The nature of the relationship between the first named Respondent and the second named Respondent, other than that the former sells, or resells, the latter’s products, is not clear.
In these circumstances, the Panel finds that the first named Respondent is properly the Respondent to this proceeding. The second named Respondent is not.
B. Substantive Elements of the Policy
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must 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 was registered in bad faith and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
(i) Identical or Confusingly Similar
There is no real dispute between the parties that the disputed domain name is identical to the Complainant’s trademarks.
Apart from the addition of the generic top-level domain “.com”, and possibly the omission of a space between the words “mineral” and “care”, the disputed domain name is identical to the registered Benelux and Australian word marks referred to above. The addition of the suffix “.com” to the Complainant’s registered trademark can be disregarded as a functional requirement of the domain name system. See for example Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493. The presence or absence of a “space” does not add to or detract from the distinctive force of the trademark as a whole.
Accordingly, the Complainant has established this requirement under the Policy.
(ii) Rights or Legitimate Interests
The Complainant contends that the Respondent is not authorised to use the disputed domain name and is not commonly known by it. In addition, acknowledging that the Respondent used to be an authorised distributor, the Complainant contends that the Respondent does not satisfy the requirements laid down in cases such as Motorola Inc. v. NewGate Internet Inc., WIPO Case No. D2000-0079 and Oki Data Americas, Inc., v. ASD, Inc. WIPO Case No. D2001-0903 (“Oki Data”).
For its part, the Respondent relies on its history of more than 15 years using the disputed domain name and also invokes the Oki-Data principles and refers to American Express Marketing & Development Corp. v Planet Amex and Blake Fleetwood, NAF No. FA 1395159 (“Planet Amex”) as a factually identical case in which a terminated distributor was held to continue to have rights and legitimate interests under the Policy.
The termination of the Respondent’s distributorship and the redirection of the disputed domain name to a website which offers for sale products competing with the Complainant’s MINERAL CARE products on the scale indicated here establishes the prima facie case that a Complainant is required under the Policy to demonstrate a sufficient showing of a want of rights or legitimate interests on the part of the Respondent: see e.g. paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In Planet Amex, the respondent had been conducting a travel agency business since 1973. It had registered the domain name “planetamex.com” in 1998 with the knowledge and consent of American Express. At that time it appears to have been participating as a franchisee in the American Express travel agency business. The respondent continued to use the domain name, apparently with American Express’ consent even after the terms of the franchise arrangement were changed in 2003 to preclude such use. In 2010, American Express declined to renew the franchise agreement. Extensive litigation followed between the parties, including the domain name dispute now relied on by the Respondent.
The learned panelist in Planet Amex found that the respondent did have rights and legitimate interests in the domain name on the basis that, on the uncontested evidence of extensive use and promotion, the respondent had become known by the name Planet Amex.
In the present case, advertisements or “flyers” included in Annex E to the Response are prominently headed
DEAD SEA PRODUCTS
Then, they feature images and other promotional information. At the foot of the page or advertisement, there appear names and addresses: the Complainant’s predecessor on one line and underneath, in at least one case MINERAL CARE USA and the disputed domain name. In other cases, there is the disputed domain name. For example, in one, after specifying the Complainant’s predecessor’s name and contact details, the flyer continues on the next line “In US Contact 1-800-DEAD SEA xxx xxx” and then the URL.
It is of course possible for there to be more than one trademark used on or in some advertising material. In the present case, however, it appears that the trademarked products, MINERAL CARE, are being offered to the public by “Dead Sea Products”. The information in the footer is address or contact information and typically identifies the Complainant’s predecessor by name.
Moreover, use of a manufacturer’s trademark by a distributor would typically be seen as indicating the manufacturer’s products although this is not always the case. In these circumstances, it is very difficult to make the finding made in the Planet Amex case that the Respondent had become commonly known as MINERAL CARE.
The evidence in the record also demonstrates that the Complainant is the owner of at least two registered trademarks in the USA consisting of, or featuring, MINERAL CARE, Trademark No. 2812758 (for the words MINERAL CARE in a slightly stylized format) and No. 2810364 for MINERAL CARE in a label format. The Respondent’s use of that trademark for goods which are directly covered by the scope of those registrations but not authorised by the Complainant would appear to conflict directly with the rights conferred by those registrations.
Given the extent to which the disputed domain name is now being used to promote and sell competitive products apparently in conflict with the Complainant’s registered trademarks in the USA, the Panel would be very reluctant to depart from the conclusion typically flowing from the Oki Data principles in these circumstances that the Respondent does not have rights or legitimate interests in the disputed domain name.
(iii) Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.
The redirection of the disputed domain name to a website selling products competitive with the Complainant’s MINERAL CARE brand is plainly use in bad faith (in the absence of rights or legitimate interests). That is a necessary finding, but not sufficient in itself to establish this requirement as there must also be registration in bad faith.
On the record in this case, it appears plain that the Respondent registered the disputed domain name in good faith. Certainly, the acceptance of that registration and its use over many years by the Complainant’s predecessors in title removes any possibility for objection on that score at this stage.
The Panel acknowledges that there have been a number of decisions where panels have been willing to rule that a registration was in bad faith where the respondent’s continued use of the domain name was inconsistent with the terms on which the domain name had been registered. The learned panelist in Greyson International, Inc. v. William Loncar, WIPO Case No. D2003-0805 explained the rationale of those cases as:
“the rationale of the panel decisions cited in the preceding paragraph appears to be as follows: The domain name was registered by the distributor/web designer for the distributor/web designer's use under certain conditions or for certain discrete purposes. If the conditions no longer obtain or the use exceeds the specified purposes, registration in bad faith may be inferred, because the complained-of use (e. g., use after the distributor has been terminated or after the web designer has completed its specified tasks), if contemplated by the parties at the time of the registration would have been bad faith.”
What must be tested, however, is the Respondent’s motivations at the time of registration. It must also be borne in mind that the dual requirement of both registration and use in bad faith was very sharply debated in the lead up to the adoption of the Policy and an alternative proposal that only registration or use in bad faith would suffice was rejected. Accordingly, the preponderant and preferable view is that it is impermissible to use subsequent conduct to override actual intentions at the relevant time rather than providing an inference for what those intentions were. See, e.g., The Proprietors of Strata Plan No. 36, A Turks and Caicos Corporation v. Gift2Gift Corp. WIPO Case No. D2010-2180 and SPECS Surface Nano Analysis GmbH v. Rickmer Kose / Domain Name Administrator, PrivacyProtect.org, WIPO Case No. D2010-1173.
In the present case, it cannot be disputed that the Respondent registered the disputed domain name in good faith. There is no evidence before the Panel about any terms on which that registration was effected such as an agreement to transfer the disputed domain name to the trademark owner if the relationship ended. Such an arrangement may be common, or even typical, but it is not invariable and cannot, in the absence of evidence, simply be inferred.
Accordingly, the Panel finds that the Complainant has failed to establish on the record that the disputed domain name was registered in bad faith and so fails to establish the third requirement under the Policy.
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Dated: March 11, 2012