WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Indiba S.A. v. Venus America USA
Case No. D2011-2084
1. The Parties
The Complainant is Indiba S.A. of Barcelona, Spain, represented by Grau & Angulo, Spain.
The Respondent is Venus America USA of Miami, Florida, United States of America, represented by Prestige Universal Corp.
2. The Domain Name and Registrar
The disputed domain name <indiba.com> (the "Domain Name") is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2011. On November 29, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On November 29, 2011, GoDaddy.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.
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 December 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2011. The Response was filed with the Center on December 19, 2011.
The Center appointed Ian Lowe as the sole panelist in this matter on January 4, 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. Preliminary Issues
Identification of Respondent
The Panel notes that the Complaint names both Venus America USA ("Venus") and Prestige Universal Corp ("Prestige") as Respondents to the Complaint. At the date of the Complaint, however, the holder of the Domain Name registration was Venus. The Panel has therefore treated Venus as the sole Respondent to the Complaint as envisaged by paragraph 1 of the Rules. The Domain Name appears to have been transferred to Venus by Prestige on about March 17, 2011. Although the Response was filed only in the name of Prestige, both the Complainant and the Respondent appear to accept that Venus and Prestige are closely connected (as set out below). The Panel has therefore treated the Response as having been filed by Prestige on behalf of Venus.
Language of Proceedings
A number of the Exhibits to the Complaint are in the Spanish language. The Panel did not, however, consider it necessary to call for them to be translated by the Complainant into English, since:
a) the Respondent has not called for them to be translated;
b) it is apparent that the Complainant and Prestige communicated in Spanish in at least 2003; and
c) the Panel does not consider that the Exhibits in question relate to any controversy between the Complainant and the Respondent.
5. Factual Background
The Complainant was incorporated in Spain on November 16, 1983. It is an international company involved in the design, manufacture and sale of devices using radio frequency based technologies for aesthetics and beauty care and has traded under the name INDIBA since 1983. It has operations in a number of countries around the world: in the United Kingdom of Great Britain and Northern Ireland, France, Benelux, Portugal, Italy, Japan, Singapore, Indonesia, Malaysia, Republic of Korea, Mexico and Argentina.
The Complainant has a number of trademark registrations based on the term “indiba”. These include, inter alia, Spanish registrations for the stylized word mark INDIBA S.A. registered in May 1996 in Classes 3, 9 and 10.
On September 12, 1996, the Complainant and Prestige reached an agreement for the distribution by Prestige of Indiba products in several countries in South America. Prestige registered the company Indiba America Corp in the State of Florida, USA on October 24, 1996. There is no mention of this entity in the Complaint. The Complainant regarded the distribution agreement as terminated when it was not renewed on September 12, 1997, although it continued to make occasional sales to Prestige after that date.
Prestige registered the Domain Name on July 20, 1997. At the date of the Complaint the Domain Name resolved to a webpage with the message: "Contact Us: [….]@indiba.com / Check Back Soon www.indiba.com".
In 2003, Prestige restarted discussions with the Complainant to distribute its products in Colombia. During the course of those discussions, the Complainant discovered that Prestige had registered the Domain Name in 1997. The Complainant requested the immediate transfer of the Domain Name. Following email correspondence, a director of Prestige, Mr. Carruitero, wrote a letter to the Complainant on May 22, 2003 confirming that the Domain Name would be transferred within one or two months.
In June 2003, the parties mutually accepted that it was unfeasible for the parties to establish any business relationship for the distribution of Indiba products. Nevertheless, an Ownership Request Form in respect of the Domain Name was signed by both parties and lodged with the then registrars, NameRegistrars, who confirmed on October 18, 2003 that the Domain Name had been transferred to the Complainant, subject only to updating the administrative, technical and billing contact. Despite several emails from the Complainant to NameRegistrars in October 2003, the transfer was never in fact completed.
In 2010, the Complainant reopened discussions with Prestige to obtain the transfer of the Domain Name. On August 18, 2010 Mr. Shrubb, the CFO of the Complainant, sent an email to Mr. Acosta, the Operations Manager of Prestige, requesting the transfer of the Domain Name noting that "I am aware that you are not in a position to use the domain and understand that we are probably the only company that could find it of use".
On August 23, 2010, Mr. Acosta replied "Just give us an offer". Mr. Shrubb offered USD 1,500 plus transfer costs by email on August 25, 2010. Mr. Acosta replied on March 17, 2011 saying that "if you want the domain you have to pay USD 35,000". After reviewing his files, Mr. Shrubb responded that he had noticed that Prestige had previously authorized the transfer of the Domain Name at no cost. Mr. Acosta replied on April 11, 2011 that they had no intention of transferring the Domain Name because the contract dated September 12, 1996 was "still current, none of both parties went in bankruptcy (sic)".
6. Parties’ Contentions
A summary of the submissions on the part of the Complainant is as follows:
a) Prestige and the Respondent are closely related companies:
when a user tries to access the Prestige website at “www.prestigeuniversal.com” he is automatically linked to the website at “www.conchanacarvenus.com”;
although the Respondent is identified on the website as being responsible for the “www.conchanacarvenus.com”, according to the WhoIs database Prestige is the registrant of both “www.prestigeuniversal.com” and “www.conchanacarvenus.com”;
the trademark VENUS under which products are commercialized through the “www.conchanacarvenus.com” website is registered in the name of Prestige at the United States Patent and Trademark Office.
b) the Complainant has longstanding trademark registrations in respect of both INDIBA and INDIBA, S.A. and has been using INDIBA as a corporate and trading name since 1983. It has clearly established rights in respect of INDIBA. Accordingly, the Domain Name is identical or confusingly similar to a trademark or the service mark in which the Complainant has rights.
c) the Respondent has no rights or legitimate interests in respect of the Domain Name:
the Complainant did not authorize Prestige or the Respondent to register the Domain Name and the agreement dated September 12, 1996 did not give Prestige (or the Respondent) permission to do so;
since the contract dated September 12, 1996 terminated at the end of its original one-year term, any possible right on the part of Prestige (or the Respondent) to hold the Domain Name came to an end on September 12, 1997;
the Complainant states that panelists have consistently found that an authorized distributor of trademarked goods has no inherent right to register a Domain Name in respect of the trademark;
Prestige repeatedly expressed its willingness to transfer the Domain Name to the Complainant;
neither Prestige (nor the Respondent) could claim any rights in respect of the Domain Name based on their trading names.
d) the Domain Name was registered and is being used in bad faith:
the Respondent is not making any use of the Domain Name, save for a webpage with the message: "Contact Us: [….]@indiba.com / Check Back Soon “www.indiba.com". However, panelists have found that inactivity or non-use of a domain name may constitute bad faith use for the purposes of the Policy.
the Respondent registered the Domain Name without the consent or knowledge of the Complainant and has refused to transfer the Domain Name when requested to do so, despite the fact that the distribution agreement had terminated, preventing the Complainant from using its trademark INDIBA as a domain name;
the Respondent tried to sell the Domain Name to the Complainant for a price of USD 35,000, in excess of out of pocket expenses related to the Domain Name.
A summary of the short Response filed by Mr. Acosta of Prestige on behalf of the Respondent is as follows:
the Domain Name belonged to Prestige because Indiba America Corp was Prestige's company in the USA with a filing date in Florida of October 24, 1996. The public record is available at “www.sunbiz.org”;
“it is not fair that [the Complainant] asks for the Domain Name just because [Prestige] is not using it at this time;
the Complainant does not mention that Prestige asked for USD 35,000 for the Domain Name because Prestige wanted the Complainant to stop asking for it, it was never acting in bad faith;
the Complainant acted in bad faith in using Mr. Carruitero with a bad intention, namely to take advantage of his skills after he had invested more than USD 500,000 promoting the Complainant's name in South America, paying for advertising, training for doctors and engineers in Barcelona and equipment purchase. Once the Complainant's name became popular in South America, the Complainant did business there directly with the result that Mr. Carruitero lost USD 500,000 and the Complainant had a new distributor;
the Domain Name is “not confusing because when [Prestige] created the name [it] did not find other similar names”;
the Respondent has rights or legitimate interests in the Domain Name because Prestige made a “high investment in equipment and marketing”. It therefore has ”10 hyperthermia equipment” that it is going to use in the opening of its center in the USA. Prestige has an advertising campaign for this purpose and is working on the design of the new “www.indiba.com” website;
the Respondent did not register or use the Domain Name in bad faith. The Respondent has the Domain Name because it created advertising for its business purposes.
7. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Respondent does not dispute that the Complainant has traded under the name INDIBA since 1983 and has registered trademarks comprising INDIBA dating back to 1996 in Spain. The dominant element of the INDIBA marks is the stylized word INDIBA. Ignoring the “.com” suffix, INDIBA is identical to the Domain Name. The Panel finds that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent seeks to establish rights or a legitimate interest in respect of the Domain Name by reference to the incorporation and ownership of Indiba America Corp, registered in the state of Florida, USA in October 1996. The Respondent, however, gives no explanation for the incorporation of a company with that name at that time and no information as to what the company has done since it was established. It suggests that it is now making preparations for the company to carry on business using 10 machines Prestige purchased, presumably, from the Complainant either during the period of its distribution agreement with the Complainant in 1996/97 or subsequently.
The Respondent did not produce any evidence or information as to Indiba America Corp but in its Response invited the Panel to consult the Florida Department of State website at “www.sunbiz.org”. With some hesitation the Panel did so. The limited filing information available indicated that Mr. Carruitero was the registered agent and a director of the company whose status was inactive. The Last Event was the administrative dissolution of the company on October 16, 1998 after the company's check for the filing fee in respect of the Annual Report filed on September 19, 1997 had been returned by the bank because of insufficient funds. In the circumstances and in light of the Respondent's express invitation to consult the website, the Panel did not consider it necessary to issue a Panel Order to give the parties the opportunity to comment on the information available.
In the absence of any coherent explanation to the contrary, the obvious inference in this Panel’s view is that Prestige incorporated Indiba America Corp in anticipation of its agreement with the Complainant to distribute the Complainant's products in South America. Prestige apparently did so without the knowledge or authority of the Complainant at a time when the Complainant already held a number of trademarks in Spain and had applied to register INDIBA S.A. and device as a trademark in the USA in Class 10 in respect of medical apparatus for the therapeutic treatment of pain and eye disorders. Prestige registered the Domain Name in July 1997 during the currency of the distribution agreement and does not dispute that it did so without the knowledge or consent of the Complainant. This was shortly before what the Complainant states was the expiry of the original one year term of the distribution agreement. This is not disputed by the Respondent.
There is no suggestion, if relevant, that Prestige used the Domain Name in connection with its distribution of the Complainant's products whether in the period to September 1997 or subsequently. In the Panel's view, the circumstances of the incorporation of Indiba America Corp cannot give rise to any right or legitimate interests in the Domain Name on the part of Prestige or the Respondent. In view of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The WhoIs record for the Domain Name dated March 16, 2011 exhibited by the Complainant shows Prestige as the registrant. The WhoIs record dated November 23, 2011, however, shows the Respondent as the registrant and the record as having been last updated on March 17, 2011. The Panel therefore concludes that the Domain Name was transferred by Prestige to the Respondent as of March 17, 2011 and that the Respondent accordingly registered the Domain Name on that date.
Strictly, therefore, the question as to registration and use in bad faith must be answered in respect of Venus, the formal Respondent to the Complaint. No explanation is offered in the Response as to the circumstances of the registration by Venus. At the time of registration, Venus, by its alter ego Prestige, was well aware of the Complainant's rights in the INDIBA trademark and of the Complainant's claim to have the Domain Name transferred to it. The Panel notes that the Domain Name was transferred to the Respondent on the same day that Mr. Acosta on behalf of Prestige sent an email to the Complainant asking for USD 35,000 for the transfer of the Domain Name. The suggestion in the Response that he asked for that sum because the Respondent had a legitimate interest in the Domain Name and wanted the Complainant to stop asking for it does not appear to the Panel to be consistent with the email correspondence or the events.
The Panel finds that the Domain Name was registered by the Respondent in bad faith and does not consider that the Respondent can derive any protection or benefit from the earlier acts or circumstances of Prestige. Furthermore, the subsequent holding of the Domain Name by the Respondent, against the background of the registration and the request for payment of USD 35,000, amounts to use of the Domain Name in bad faith. The Panel accordingly finds that the Domain Name has been registered in bad faith and is being used in bad faith.
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 <indiba.com> be transferred to the Complainant.
Dated: January 18, 2012