World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Albir Hills Resort, S.A. v. Telepathy, Inc.

Case No. D2012-0997

1. The Parties

The Complainant is Albir Hills Resort, S.A. of Alfaz del Pi Alicante, Spain, represented by PADIMA, Abogados y Agentes de Propiedad Industrial, S.L., Spain.

The Respondent is Telepathy, Inc. of Washington, DC, United States of America (“U.S.”), internally represented.

2. The Domain Name and Registrar

The disputed domain name <sha.com> is registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2012. On May 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 11, 2012, the Registrar 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 May 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2012. The Response was filed with the Center on June 3, 2012.

The Center appointed Luca Barbero, Luis Larramendi and The Hon Neil Brown Q.C. as panelists in this matter on June 28, 2012. The Panel finds that it was properly constituted. Each member of 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 manages a clinic focused on improving people’s health and well-being, named “SHA” and is the owner of the following trademark registrations for SHA:

Community Trademark No. 6115761 for SHA (denominative), filed on July 19, 2007, in the following classes: 3 (for bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices); 43 (for restaurant services (food); temporary accommodation); and 44 (for medical services, excluding services for the testing of blood; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services);

Community Trademark No. 4960076 for logo, filed on March 15, 2006, in the following classes: 3 (for bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices); 43 (for restaurant services (food); temporary accommodation); and 44 (for medical services, excluding services for the testing of blood; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services);

Community Trademark No. 9090572 for logo, filed on May 10, 2010, in the following classes: 3 (for soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices”); 43 (for restaurant services (food); temporary accommodation; hotel services); and 44 (for medical services; plastic surgery; Physiotherapy; Hygienic and beauty care for human beings; Spa services; spas; health spa services);

International Trademark No. 936097 SHA (denominative) registered on July 27, 2007 and designating Austria, China, Switzerland, Iceland, Japan, Norway, Russia and The United States, in classes 43 (for restaurant services; accommodation) and 44 (for medical services).

The Complainant is also the owner of the domain name <shawellnessclinic.es>, registered on May 25, 2010 which points to the Complainant’s web site ‘’www.shawellnessclinic.es’’.

The disputed domain name <sha.com> was registered on August 7, 1998.

5. Parties’ Contentions

A. Complainant

The Complainant informs the Panel that the SHA Wellness Clinic was derived from a personal experience of Alfredo Bataller Parietti, that during 30 years underwent inefficient treatments with medicines as a remedy for different digestive pathologies he suffered since youth. “Having experienced organism’s auto-healing power through natural therapies and a healthy diet, Mr. Bataller decided to look into the origin of this knowledge, getting in touch with the world’s leader in such matters, Mr. Michio Kushi.” After that, Mr. Bataller conceived SHA Wellness Clinic, a place where ancient eastern techniques are combined with the latest western medical advances, with the aim to benefit health, well-being and beauty.

The Complainant underlines that its Wellness Clinic has been attended by famous people such as Naomi Campbell, Carine Roitfeld, Bruce Willis, Elsa Pataki, Kylie Minogue, Alejandro Sanz, Francoise Pinod, Svetlana Melvedeva (first Russian Lady), and some Arab princes and sheikhs. The SHA Wellness Clinic has also received numerous awards since 2009, such as: Most excellent European destination spa 2012, Best SPA of Spain 2010 by SpaFinder, Best Medical Hotel in Spain by Hostelco 2010, Best International Medical SPA 2010 by Conde Nast Traveller, Best SPA of Spain 2009 by Spa Finder, Best Gastronomic Tendency 2009 by Millésime ‐ Madrid, Green Award 2009 by Fundación José Navarro – Valencia.

The Complainant states that its trademark SHA is well-known in the health sector and contends that the disputed domain name is confusingly similar to the Complainant’s trademarks, in view of the identity of the distinctive core between the disputed domain name and the Complainant’s trademarks and the Complainant’s domain name and in light of the fact that the disputed domain name is pointed to a web site providing a collection of links to third party sites, including links for hotel accommodation. The Complainant also highlights its need of the disputed domain name <sha.com> for the correct and natural expansion of its business.

The Complainant states that the Respondent has no prior trademark rights to, or legitimate interests in, the trademark SHA and points out that “Sha” is not the name of the Respondent and that the Respondent is not commonly known by the disputed domain name.

The Complainant also asserts that the proof of the lack of legitimate interests of the Respondent is a probatio diabolica to the Complainant and that the genericity of a domain name does not exempt a respondent from proving this requirement.

With reference to the bad faith requirement, the Complainant states that Albir Hills Resort SA is a well-known company in the wellness sector which has been operating in the market for 15 years. The Complainant underlines the importance of online business in the tourism sector and treatment reservations, and the impact of domain name registrations which might confuse Internet users.

The Complainant points out that “the fact that the [Respondent’s] use is not real produces an obstruction act for my client, because the obvious and logical owner of the domain name is the owner of SHA. That, and furthermore the fact that there are no trademarks “SHA” owned by the respondent, implies a decrease of the reputation of my client’s trademarks”.

The Complainant states that, after the creation of the SHA Wellness Clinic, the Complainant noticed that the disputed domain name <sha.com> was already registered; the Complainant thus attempted to purchase it from the Respondent, but, since the Respondent had requested an “exaggerated offer”, the Complainant opted for filing this Complaint.

With respect to relevant aspects of paragraph 4(b) of the Policy, the Complainant contends that the Respondent is attempting to benefit from the Complainant’s reputation and well-known trademarks, that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant and that the Respondent is trying to intentionally attract, for commercial gain, Internet users to its web site or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.

B. Respondent

The Respondent states that the Complaint is an attempt at Reverse Domain Name Hijacking since there is no basis for transferring the disputed domain name <sha.com> to the Complainant, as the disputed domain name was registered by the Respondent in 1998, several years before the Complainant came into existence and it is thus impossible that it was registered in a bad faith attempt to target the Complainant. The Respondent specifies that the disputed domain name was originally registered on August 7, 1998 in the name of the Respondent’s predecessor in interest, a sole proprietorship owned by Nat Cohen, who is also the President, Founder, and sole owner of the Respondent, Telepathy, Inc.

The Respondent informs the Panel that it owns over 1,000 three-letter dot-com domains, and that it has been registering since 1998 three letter and common word domain names since they best fulfill the purpose of a domain name which is to be easy to remember. The Respondent hosts underdeveloped domain names with domain name parking services which pay a share of the advertising revenue they generate.

The Respondent thus contends that it has used the disputed domain name in connection with a bona fide offering of goods and services, establishing its rights to, and legitimate interest in, the disputed domain name.

The Respondent highlights that the Complainant does not have exclusive rights to the three-letter combination “sha”, whose possible commercial uses are limitless, and emphasizes that the Complainant’s trademark has a narrow use only for spa services, while there is no evidence that it is well known outside of that market. The Respondent also underlines that it did not register the disputed domain name with the Complainant’s trademark in mind and that it had no knowledge of the Complainant, of its web site and of its business name or trademark when it registered the disputed domain name over thirteen years ago. The Respondent highlights that it did not register the disputed domain name with the intention either to sell it to the Complainant or to disrupt the Complainant’s business or to create confusion amongst consumers and prevent the Complainant from owning a domain name incorporating its trademark.

The Respondent underlines that the Complainant is vague and misleading about its date of formation and the date of first use of the mark SHA, since none of the documents provided by the Complainant supports a date of first use earlier than 2006 (the earliest application date for the Complainant’s trademarks). In fact, notwithstanding the Complainant’s statement that it was “operating in the market for 15 years”, according to the articles about Sha Wellness Clinic submitted by the Complainant, the Complainant opened in 2008 after construction work began in 2007. Moreover, the Response points out that the Complainant’s own website at “www.shawellnessclinic.com” states that the idea for the Complainant’s business only occurred to the founder after a sequence of events beginning with the founder’s treatment for a medical condition in 2000.

With reference to the use of the disputed domain name, the Respondent indicates that it has not used the

disputed domain name in connection with the goods or services marketed by the Complainant, since no links related to the Complainant’s goods or services have appeared on the home page of the web site published at the disputed domain name, nor is there any evidence supporting any basis for a finding of bad faith.

The Respondent states that, since the Complainant failed to acquire the disputed domain name through commercial negotiations, it is now attempting to abuse the UDRP to obtain the transfer of the disputed domain name. The Respondent thus requests that the Panel issue a decision finding that Complainant has engaged in Reverse Domain Name Hijacking.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

According to the consensus view of WIPO UDRP Panelists summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), ownership of a trademark to which the disputed domain name is identical or confusingly similar generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration or first use and the goods and/or services for which it is registered are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel’s determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP.

In the case at hand, the Complainant has provided evidence of ownership of trademark registrations for SHA, including the Community Trademark No. 6115761 for SHA (denominative), filed on July 19, 2007, in classes 3 and 43, and the International Trademark No. 936097 SHA (denominative) registered on July 27, 2007 and designating Austria, China, Switzerland, Iceland, Japan, Norway, Russia and The United States, in classes 43 and 44.

In comparing the Complainant’s mark SHA to the disputed domain name <sha.com>, it should be taken into account the well-established principle that the generic top level domain may be excluded from consideration as being a merely functional component of a domain name. See inter alia, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (“the specific top level of the domain name such as ‘net’ or ‘com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”) and Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 (“the accused domain name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK”).

In light of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

(iii) Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(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 non-commercial 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”.

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with UDRP precedent, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See, inter alia, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; and MetAmerica Mortgage Bankers v. Whois ID Theft Protection c/o Domain Admin, NAF Claim No. FA852581.

It is also well established that a respondent may well have a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant, provided that the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words and not because of its value as a trademark and further provided that the website to which the domain name resolves is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (see ELK Accesories Pty Ltd. v. Parnaz Farahani / Elk.com, WIPO Case No. D2012-0455; National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2).

As mentioned in the paragraphs above, the Complainant has become aware that the disputed domain name was already registered by the Respondent only after the beginning of its activity and, since it could not conclude a negotiation with the Respondent to obtain the transfer of the disputed domain name, decided to file a Complaint under the UDRP.

The Complainant has also stated that “the fact that the [Respondent’s] use is not real produces an obstruction act for my client, because the obvious and logical owner of the domain name is the owner of SHA. That, and furthermore the fact that there are no trademarks ‘SHA’ owned by the respondent, implies a decrease of the reputation of my client’s trademarks”.

The Panel notes that, as highlighted by the Respondent, <sha.com> is a three-letter domain name that was registered in 1998, many years before the Complainant’s existence. Therefore, the Respondent clearly could not have been aware of any trademark rights of the Complainant when it registered the disputed domain name under the Policy. Furthermore, there is no evidence, also in the use of the disputed domain name, that it has ever been the intention of the Respondent to target the Complainant and its mark.

Therefore, the Panel finds that the Respondent has shown that it has rights or legitimate interests in respect of the disputed domain name. As mentioned in ELK Accesories Pty Ltd. V. Parnaz Farahani / Elk.com, supra, “It is well settled that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is identical or confusingly similar to the trademark of a complainant, provided it has not been registered with the complainant’s trademark in mind” (see: Bradley D Mittman MD dba FRONTRUNNERS® v. Brendhan Hight, MDNH Inc, WIPO Case No. D2008-1946; National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. V. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). The use of the domain name consistent with such good faith belief may establish a legitimate interest (see: Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093; WIPO Overview 2.0, paragraph 2.6)”.

In light of the above, the Panel finds that the Complainant has failed to prove the second requirement of the Policy.

B. Registered and Used in Bad Faith

As mentioned above, the disputed domain name was registered by the Respondent (rectius, by its predecessor in rights) in 1998, when the Complainant did not even exist; the Complainant’s mark SHA was filed for in 2006 and the Complainant has not submitted evidence of prior use of its trademark.

In view of the above, the Respondent could not have been aware of the Complainant’s mark at the time of the registration of the disputed domain name. Furthermore, the disputed domain name is constituted by three letters which, as evidenced by the screenshots of the first results highlighted from a Google search for “sha” submitted by the Respondent, are used as acronyms to identify many items or entities, such as the “Secure Hash Algorithm”, the “Saskatchewan Hockey Association” and the “Society for Historical Archaeology”.

Therefore, the Panel finds that there is no evidence that the disputed domain name was registered in bad faith.

With reference to the use of the disputed domain name, the Panel notes that it is currently pointed to the web site “www.searchfusion.com’’, which provides a search field allowing users to be redirected to third party commercial sites related to the item searched for. No direct reference is made to the Complainant or its products and services on the home page of the web site and there is no evidence that the Respondent tried to generate confusion among Internet users, sought to damage the Complainant or engaged in any other bad faith activities.

Therefore, the Panel finds that also the use of the disputed domain name made by the Respondent does not amount to bad faith.

C. Reverse Domain Name Hijacking

The Respondent requests a finding of Reverse Domain Name Hijacking. Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as using the Policy in bad faith to attempt to deprive the domain-name holder of a domain name.

As highlighted, amongst others, in Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279 (citing Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309) “[a]llegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy” (see also Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151).

In the case at hand, the registration date of the disputed domain name precedes the dates of the Complainants’ relevant trademark registrations and the evidence shows that the disputed domain name has been used as part of a bona fide business of the Respondent, which owns over 1000 three-letter-domains in its domain name portfolio.

The Panel considers that the Complainant is represented by an attorney who should have appreciated that the Complaint could not succeed in the present proceeding since the disputed domain name was registered by the Respondent eight years prior to filing the trademark applications for SHA.

Moreover, the Complainant’s representative has misconceived the nature and the purpose of the Policy according to which the Complaint was brought. The Complainant has, in fact, emphasized its need of the disputed domain name to promote its business online and has explicitly stated that it filed the Complaint due to the failure of its negotiations with the Respondent, which requested “an exaggerated offer” for transferring the disputed domain name. The Panel finds that the Complainant’s representative ought to be aware that the UDRP is aimed at providing trademark owners with a remedy for abusive domain name registrations and is not an alternative strategy to obtain the compulsory transfer of domain names legitimately registered by third parties after the failure of acquisition through negotiations.

The Panel also considers that a statement in the Complaint (“the Complainant ALBIR HILLS RESORT SA is a well known company in the wellness sector and in particular in a national level, that has been operating in the market for 15 years”) is misleading as to the duration of the Complainant’s business, since, according to the evidence submitted by the parties, the Complainant opened in 2008 and no evidence of use of the Complainant’s trademark SHA before the filing of the trademark in 2006 was submitted by the Complainant.

Furthermore, the Complainant has alleged that the Respondent is attempting to benefit from the Complainant’s reputation and well-known trademarks and that the Respondent registered the disputed domain name for the purpose of disrupting its business and to attract for commercial gain Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark. As mentioned in the prior paragraphs, these claims have no grounds, as the disputed domain name was registered for its descriptive value several years before the existence of the trademark at issue and has not been used to promote activity in the same field of the Complainant.

With specific reference to the use of the disputed domain name, the Complainant’s submission of screenshots of the Respondent’s web site showing links for hotel accommodations was, as the Complainant pointed out, based on searches for “hotel” in the search field that were made by the Complainant itself. The result of those searches was clearly put forward in evidence by the Complainant to persuade the Panel that the Respondent’s web site directly promoted services competing with the Complainant. That conclusion was not justified.

Nor were the other submissions made by the Complainant that were based on the presence of the search facility on the Respondent’s website. In its submissions the Complainant argued as follows:

“Moreover, if you access to sha.com, the web page is a general search service, in which you can enter the word you need to find and they inform you about possibilities. For example, if we move from the first screen of the web, pretending to ask for a “hotel”, that website leads you to another, which have various possibilities and offers for hotels and accommodations. That scenario could generate problems to my client because when possible costumers try to access to its webpage, the first domain will come to their minds will be Sha.com, and when they find this other website, they can think that the famous SHA does not have any webpage. The direct consequence will be the loss of potential customers for SHA. And that is an obstruction act, because, actually, is a non-real use of the trademark in market. Fact this that prove, in an undisputed way, the abusive and malicious use of the domain name www.sha.com...”.

Contrary to the submission of the Complainant, is clear that the mere presence of a search function could not conceivably have lead to “the loss of potential customers for SHA”, it was not “an obstruction act”, it did not prove “the abusive and malicious use” of the Disputed Domain Name by the Respondent and, most importantly for present purposes, was not a justification for making such serious and baseless allegations against the Respondent.

In light of the above, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. See, along these lines, Futureworld Consultancy (Pty) Limited v. Online advice, WIPO Case No. D2003-0297; Kur- und Verkehrsverein St. Moritz v. Domain Finance Ltd, WIPO Case No. D2004-0158; ELK Accesories Pty Ltd. v. Parnaz Farahani / Elk.com, supra.

7. Decision

For all the foregoing reasons, the Complaint is denied and the Panel declares that it was brought in bad faith and constitutes an abuse of this proceeding.

Luca Barbero
Presiding Panelist

Luis Larramendi
Panelist

The Hon Neil Brown Q.C.
Panelist

Dated: July 19, 2012

 

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