WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jean Heitz v. Haberfield Naturopathic Centre/Rosa Ghidella

Case No. D2011-1471

1. The Parties

The Complainant is Jean Heitz of Germigny l'Eveque, France, represented by Novagraaf France, France.

The Respondent is Haberfield Naturopathic Centre/Rosa Ghidella of Haberfield, New South Wales, Australia.

2. The Domain Name and Registrar

The disputed domain name <argilitz.com> is registered with Aust Domains International Pty Ltd dba Aust Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2011. On September 1, 2011, the Center transmitted by email to Aust Domains International Pty Ltd dba Aust Domains, Inc. a request for registrar verification in connection with the disputed domain name. On September 2, 2011, Aust Domains International Pty Ltd dba Aust Domains, 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 September 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2011. On September 28, 2011 the Center received an email communication from the Respondent in which it stated that the disputed domain name had not been used for any purposes and therefore, a possible settlement of the dispute could be reached. On the same date, the Center sent a communication to the parties informing the content of Respondent’s communication and then received an email communication from the Complainant in which it stated that it would not withdraw the Complaint as long as the free transfer of the disputed domain name had been implemented. On the same date, the Center acknowledged receipt of Complainant’s communication and highlighted that, as a neutral dispute resolution provider, it does not take an active role in settlement negotiation between the parties and accordingly, any issue regarding settlement negotiation was rightfully a matter for the parties.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on October 7, 2011. 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 is the owner of the following trademarks ARGILETZ worldwide, among others:

The Respondent registered the disputed domain name on July 7, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant argued the following:

1. The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

That the Complainant manages the company Argiletz, which exists since 1987 and which sells clay products for the beauty and the health of the body.

That the Complainant owns the domain names <argiletz.com> and <argiletz.eu>.

That the Complainant is the owner of several trademarks ARGILETZ worldwide.

That the disputed domain name is confusingly similar to the Complainant’s trademarks. That the terms “Argiletz” and “Argilitz” are very close to each other, from the visual, phonetic and conceptual points of view. That there is only one letter of difference between them, namely the letters “i” instead of the letter “e”. That said difference is not enough to distinguish the two terms. That the two terms are composed of three syllables, the two first ones being strictly identical (“ar”/”ar”, “gi”/”gi”) and the two last ones being quasi identical ( “l e t z”/ “l i t z”). That both terms have a very close pronunciation.

That the replacement of the vowel “e” by the vowel “i” is not sufficient to exclude confusing similarity as this modification is made in the last part of the denomination, which is the less perceptible part of a trademark for the consumers.

That the Complainant has detected other websites featuring the trademark ARGILETZ, and has sent cease and desist letters to their administrators. That said administrators have taken the necessary steps to correct the use of the term “Argiletz” in said websites, with the exception of the Respondent, who has not, despite having received one such letter.

That the Complainant has noticed that a search conducted on a search engine regarding “Argilitz” leads to a proposed associated search on “Argiletz”.

2. The Respondent has no rights or legitimate interests in respect of the domain name.

That the Respondent does not own a trademark ARGILITZ, nor a trademark ARGILETZ.

That the Respondent is not linked to the Complainant or its business in any manner, nor does it act on its behalf.

That the Complainant had not given any authorization to the Respondent to use its trademark ARGILETZ in a confusingly similar domain name.

That the Respondent has not been commonly known by the name “Argiletz” or “Argilitz” and has therefore no rights or legitimate interests in any of them.

3. The disputed domain name was registered and is being used in bad faith.

That the disputed domain name has been registered on July 7, 2010 and it has never been used for the activity of the Respondent, namely a Naturopathic Center.

That the domain name was firstly directed to the parking page and to a parking website with links to other competitors of the Complainant in the area of cosmetics, which shows that the intention of the Respondent is not to exploit the disputed domain name but to prevent the Complainant from registering it.

That the Respondent provides clay therapy in its center. That the prefix “argil” refers to the French term “argile” which means clay. That it is obvious that the Respondent wanted to create confusion when it registered the disputed domain name.

That the Complainant’s trademarks are used worldwide and notably in Australia, and that it is very unlikely that the Respondent, at the moment of registering the disputed domain name, was not aware that it was infringing Complainant’s trademarks, domain names or activity.

That the registration of the disputed domain name cannot be fortuitous considering the fact that the Complainant and the Respondent are in the same field of activity, namely beauty products, and beauty of the body.

That the disputed domain name has never been used by the Respondent in connection with a bona fide offering of goods or services.

That several cease and desist letters were sent to the Respondent requesting the transfer of the disputed domain name. That no response to said letters was received by the Complainant. That the Respondent’s silence constitutes bad faith use of the disputed domain name.

B. Respondent

The Respondent did not file any Response.

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), 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 has been registered and is being used in bad faith.

In the administrative proceeding, the Complainant must prove that each of these elements are present.

As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true the reasonable allegations of the Complaint (Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

A. Identical or Confusingly Similar

The Complainant is the owner of several ARGILETZ trademarks worldwide. The disputed domain name is confusingly similar to the Complainant’s trademark. The only difference between the disputed domain name and the Complainant’s trademark is one letter. This is clearly a typo squatting case where the difference consisting of one letter does not distinguish the disputed domain name from the Complainant’s trademark, phonetically or visually. The substitution of the letter “e” by the letter “i” is a purposeful misspelling mistake. (See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971; Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073; Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043; Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302.)

The addition of the generic top-level domain “.com” is immaterial for purposes of the Policy. To carry into effect the confusing similarity analysis, a panel usually does not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. (See Diageo Brands B.V., Diageo North America, Inc., and United Distillers Manufacturing, Inc. v. iVodka.com a.k.a. Alec Bargman, WIPO Case No. D2004-0627; SBC Communications v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602).

For all the above reasons, the disputed domain name is confusingly similar to the Complainant’s trademark ARGILETZ. The first requirement of the Policy is fulfilled.

B. Rights or Legitimate Interests

The following are examples of circumstances where a Respondent may have rights or legitimate interests in a disputed domain name:

(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. (Policy, paragraph 4(c)).

The Respondent has not submitted any evidence of use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The Respondent has not demonstrated that it is commonly known by the disputed domain name. The evidence submitted by the Complainant suggests that the Complainant’s trademark ARGILETZ is well publicized. Said evidence shows that a search conducted on a search engine ties “Argilitz” to “Argiletz”.

The Complainant’s trademark refers to “argile” which means “clay” in French. The Respondent provides clay therapy in its center, which shows that the Respondent must have known the Complainant and the Complainant’s activities at the time of registration of the disputed domain name.

The Respondent is not linked to or associated to the Complainant or its business in any matter, nor is it authorized to use the Complainant’s trademark or the disputed domain name.

The disputed domain name has resolved to a parking page, and to a website with links to some of the Complainant’s competitors. Both activities constitute commercial, bad faith conduct, with the intention to misleadingly divert consumers for commercial gain. (See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708; Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258; Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462; Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404; Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364; Lardi Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2010-1437; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.)

This Panel finds no rights or legitimate interests on the side of the Respondent. The second requirement of the Policy is fulfilled.

C. Registered and Used in Bad Faith

According to Paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use 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 website 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 website or location or of a product or service on your website or location.”

The disputed domain name has resolved to a parking page and to a page that featured links to some of the Complainant’s competitors. Therefore, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to different websites, by creating a likelihood of confusion with the Complainant’s mark. This constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. See e.g. Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Owens Corning v. NA, WIPO Case No. D2007-1143.

Therefore, the third element of the Policy has been fulfilled.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <argilitz.com> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Dated: October 24, 2011