WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bathox Australia Pty Ltd v. Bhojwani, Haresh
Case No. D2011-2167
1. The Parties
The Complainant is Bathox Australia Pty Ltd (ACN 001 287 467) Chipping Norton, New South Wales Australia, represented by Deutsch Miller, Australia.
The Respondent is Haresh Bhojwani, North Sydney, New South Wales, c/o Newimage Cosmetics Pty Ltd (ACN 079 153 049) Sydney, New South Wales Australia.
2. The Domain Name and Registrar
The disputed domain name <bathox.com> is registered with DSTR Acquisition PA I, LLC dba DomainBank.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2011. On December 9, 2011, the Center transmitted by email to DSTR Acquisition PA I, LLC dba DomainBank.com. a request for registrar verification in connection with the disputed domain name. On December 9, 2011 DSTR Acquisition PA I, LLC dba DomainBank.com 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 December 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2012. The Respondent did not reply to the Complainant’s contentions by filing a formal reply. The only communication received was the email of December 20, 2011 (discussed in section 5B of this decision).
The Center appointed Derek M. Minus as the sole panelist in this matter on January 30, 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 disputed domain name was registered by the Respondent on November 19, 2004.
The Complainant is a private Australian company which (with its predecessors in title) have been providing personal care and hygiene products in Australia under the BATHOX trade mark for over 40 years. Different corporate entities have been engaged in conducting the Bathox business but they have been owned and directed by members of the one family since the 1960s. The Bathox business is a second-generation, family-owned concern. The current Chief Executive Officer of the Complainant is the daughter of the founder of the Bathox business, and her husband is the sole director of the Complainant.
The Complainant’s website is located at <www.bathoxaustralia.com.au>. Under the “company” tab, the following information is provided:
“We have being operating our business since the early 1960’s. Our products range from Bathox Bath & Shower Gels to Mouthwashes, Hygiene Disinfectants, Dog Shampoo & Conditioner, Handwashes, and Artificial Sweeteners. All of our products are manufactured in line with international standards and are greatly appreciated by customers throughout Australia, Singapore, Philippines and New Zealand. … We have been manufacturing our Sugarless Range of Sweeteners since 1995. We supply all Major Supply Chain Stores throughout Australia. We are the major Supplier of all Government Contracts through Hospitals, Goals (sic) and Pharmacies, also all major Airports and Cruise Ships throughout Australia.”
The Complainant is the registered proprietor of the following Australian registered trademarks:
2315 I 9
12 August 1969
Class 3: Bath salts
12 August 1969
Class 5: Bath salts (medicated)
6 December 2006
Class 3: Soaps including antiperspirant etc.
Class 5: Pharmaceutical and veterinary preparations etc.
BATHOX ANGEL GIRL MYSTICAL SCENT BODY WASH
6 December 2006
Class 3: Soaps including antiperspirant etc.
The Respondent is an individual, resident in Australia. He is listed as being associated with the company Newimage Cosmetics Pty Ltd, a private company incorporated under the laws of Australia. That is borne out by Australian Securities and Investments Commission (ASIC) historical extract provided by the Claimant, which shows that the company was first registered as an Australian Proprietary Company on July 1, 1997 and has been in continuous operation since that time.
The Complainant notes that:
“[It] considers that on its face, the registrant of the domain name, and therefore the proper Respondent in this administrative proceeding, is Haresh Bhojwani. However, it is apparent that the interests of Newimage Cosmetics overlap considerably with the interests of the Respondent.”
The disputed domain name resolves to a multipage, well-structured website for Newimage Cosmetics that on the home page prominently features the word BATHOX and under which are displayed the words:
“Welcome to the Bathox Website
Specially created for our South East Asian Customers”
Next to the BATHOX label, are the words, “Newimage Cosmetics Pty Ltd Creating a New Image”. Also featured on the home page are the company’s post office box address, Australian telephone and fax numbers and an email contact address. The names of 10 separate product brands, with clickable links that resolve to pictures of the products (none of which carry any BATHOX branding) are also featured on this website. Available at the company profile tab is a downloadable 15 page PDF containing a Company Profile for NewImage Cosmetics Pty Ltd. The brochure states that:
“New Image Cosmetics Pty Ltd was established in Australia in 1996 and is a privately owned Company involved in the manufacturing and distribution of quality health and beauty care products, perfumes, pharmacy and departmental/variety store related lines.
Our products are exported to nearly eight countries and they are sold in major supermarkets, discount and variety stores. Our products are one of the fast selling items in some of these countries.
Our Head Office is in Sydney, Australia and our Warehouse is located in Melbourne. We have an excellent distribution which is centralized and we are proud of our facility.
We are very committed in making all our products in Australia and are also Australian owned, thus keeping opportunities within Australia. All our products are not tested on animals. We believe this will ultimately benefit our current and future generation in the country.”
The brochure also lists the, New Image Team of seven people, including Haresh Bhojwani, who is described as Managing Director and gives the following details (compiled as of 30th June 2004):
Sales Revenue: Over 10,000,000.00 Employees: More than 25 employees.
The brochure states that the products it manufactures “come as Roll-ons, Body Spray cans, Shower Gel pump packs, Hair Gel, Room Air Freshener Cans, Feet deodorant Cans, Car Freshener Cans” and it identifies its competitive products as Impulse, Rexona, Lynx.
Lastly on the website, there is a clickable link to “our Australian website”, which resolves to a separate website at <www.desire.com.au> which features extensive product, company and brand information, none of which feature the BATHOX logo.
5. Parties’ Contentions
The following information has been summarised from the Complainant’s submissions.
According to the Complainant, it has been actively trading under, promoting and developing the reputation of the BATHOX trademark for over 40 years. As a result the Complainant says it has developed a substantial reputation in the name BATHOX within Australia and that generations of Australians have grown up with BATHOX products and BATHOX has become a household name in Australia.
Because of the high recognition for the Complainant’s BATHOX trademark in Australia, the Respondent would derive a commercial advantage from any confusion created with respect to the products advertised by the Respondent on the website hosted at the disputed domain name. According to the Complainant, the public will be misled into thinking that the Complainant is the source of the products advertised or that there is some sort of association, affiliation or endorsement of these products by the Complainant.
The Complainant argues that the creation of such confusion was and continues to be the intention of the Respondent when registering the domain name as the products distributed by the Respondent and promoted on the website overlap with, and are identical or similar to, the Complainant's products.
The Complainant primarily manufactures and distributes personal care and hygiene products. The deodorant sprays, body sprays and hair gels promoted by the Respondent on the website hosted at the domain name are also personal care and hygiene products. Further, products of the type distributed by the Respondent are generally sold through the same trade channels as, and in close proximity to, the types of products manufactured and distributed by the Complainant.
It appears that the Respondent is encouraging the confusion with the BATHOX trademark, not only by maintaining the registration of the domain name, but also through the information which is displayed on the website hosted at that domain name. The Complainant considers it most likely that it was the intention of the Respondent when registering the domain name, and continues to be the intention of the Respondent in maintaining the registration of the domain name, to attempt to attract, for commercial gain, Internet users to the website hosted at the domain name, by creating confusion with the Complainant's BATHOX mark as to the source, sponsorship, affiliation, or endorsement of that website and the products promoted and offered for sale
The Complainant claims that the Respondent has failed to demonstrate any use of, or registration of the domain name in good faith and in the circumstances of this case, where a Complainant has a strong reputation in the name, this can and should lead to a finding of bad faith. The Complainant considers that if there were any use by the Respondent it would be designed only to take advantage of the Complainant's reputation in the BATHOX trademark. Such use would therefore be in bad faith and not a bona fide use of the disputed domain name.
The Complainant has not found through any of the searches it has undertaken, any person or entity ever having a business name or company name registered in Australia that incorporates the word BATHOX, except for those related to the Complainant. The Complainant has also not identified any use of BATHOX mark by the Respondent in relation to its business or products.
The Complainant contends that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website hosted at the disputed domain name, by creating confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products displayed on the website, in circumstances where no such association or affiliation exists. It argues that the creation of such confusion appears to have been the intention of the Respondent when registering the domain name, and it continues to be the intention of the Respondent in maintaining the registration of the domain name.
The Respondent did not file a formal response in reply to the Complainant’s contentions. However, on December 19, 2011 Haresh Bhojwani sent an email to the Center, in which he stated the following:
“I have received this complaint and I disagree with their claim, please can you advise me how to lodge a disagreeance (sic) and the next steps. We are the rightful owners of the domain name.”
Although the Center promptly responded advising that it was still in the process of verifying the complaint and that the Respondent would be given the opportunity to reply, no formal Response was ever received.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:
(i) that the disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant holds rights;
(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 by the Respondent.
As the Respondent did not file a Response or otherwise reply to the Complainant’s contentions, the Panel shall decide the Complaint on the basis of the Complainant’s submissions and such inferences as can be reasonably drawn from the material that the Panel is able to identify and access (Rules, paragraph 14(b)).
In reaching its conclusion the Panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name, consulting a repository such as the Internet Archive (at “www.archive.org”) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopaedias to determine any common meaning, or discretionary referencing of trademark online databases, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the BATHOX trademark in Australia. However, the registration of the trademark that dates from 1969 only specifically relates to “bath salts”. The Complainant’s registration of BATHOX in a wider category listing products like “shower gels” which are argued to be similarly manufactured by the Respondent, only dates from December 2006, whereas the disputed domain name was registered by the Respondent on November 19, 2004.
Nevertheless, the disputed domain name incorporates the Complainant’s BATHOX trademark in its entirety with the addition of the top level “.com” identifier at the end. It is well established that a domain name consisting of the Complainant’s trademark and ending with the “.com” gTLD is confusingly similar to the Complainant’s trademark (see Sanofi-Aventis v. The Counsel Group, LLC, WIPO Case No. D2005-0650). The incorporation of a trademark in its entirety has been held to be sufficient to establish that a domain name is identical or confusingly similar to a Complainant’s registered trademark (see Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201).
Therefore the disputed domain name is confusingly similar to the Complainant’s trademark BATHOX in which the Complainant has rights and the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that on the balance of probability, the Respondent has no rights or legitimate interests in respect of the disputed domain name. If a complainant shows that prima facie the respondent has no rights or legitimate interests, the onus reverts to the respondent to displace that presumption.
Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:
(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.
According to the Complainant, it has been actively trading under, promoting and developing the reputation of the BATHOX trademark for over 40 years. The Complainant is not aware of any person or entity unrelated to it ever having a business name or company name registered in Australia which incorporates the word “Bathox”.
The Complainant has had searches conducted which have demonstrated that:
- there is no trade mark registered in the United States of America containing the word “Bathox”
- Google searches show no indication of any use by the Respondent of the term “Bathox”
- there is no evidence to indicate or in any way suggest that the Respondent is commonly known by the domain name
- there is no use of the word “Bathox” by the Respondent or Newimage Cosmetics Pty Ltd in relation to its business or products. In fact, in a letter dated March 1, 2008 sent to trade mark attorneys representing the Complainant, on the letterhead of Newimage Cosmetics and signed by Haresh Bhojwani, the Respondent stated:
Please be advised that Newimage Cosmetics … Does not advertise or sell personal care products under the Trade name “Bathox” … We have never had any advertising with the name “Bathox”.
The Panel therefore accepts that prima facie, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
As the Respondent has chosen not to provide a response it is not clear on what basis it has chosen the domain name <bathox.com> to use as a vehicle to advertise its products particularly for its South-East Asian customers (for whom the website to which the disputed domain name resolves is especially targeted), and especially when the BATHOX name does not appear on its products.
However, the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name. In particular Policy, paragraph 4(c)(i) identifies that a respondent can demonstrate that it has a legitimate interest in a domain name by using it in connection with a bona fide offering of goods or services before it received notice of a dispute about the domain name.
The Respondent has been in business since 1997 and registered the domain name in November 2004. According to the correspondence provided with the Complaint, it was not until February 28, 2008 that patent attorneys, Watermark, acting on behalf of the Complainant wrote to the Respondent about its use of the disputed domain name. In a careful analysis, the panel in Corinthians Licenciamentos LTDA v. David Sallen, Sallen Enterprises, and J. D. Sallen Enterprises, WIPO Case No. D2000-0461) considered what constitutes “notice of a dispute” and stated that, “in the Policy a dispute is previous to the proceeding … [it] is not equal to ‘proceeding’, nor to ‘complainant's action to initiate proceedings’”.” The panel concluded that for the respondent’s use of the domain name to be within paragraph 4(c)(i) of the Policy, that “such use must effectively pre-date the cognizance of the dispute by the Respondent”.
In this matter, the information before the Panel is that the “dispute” was only raised with the Respondent some four years after it had registered the domain name. From the information that is available from the Respondent’s website and the letters written to the Complainant, which form part of the case file in this matter, the Respondent has used the disputed domain name in connection with a bona fide offering of goods over some period of time before then.
According to the Respondent’s website, the business Newimage Cosmetics was established in Australia in 1996, 15 years ago and it has been in continuous operation since that time. Although a small company it has an apparently growing business (the company brochure proclaims, “We have achieved growth in sales by 25% every year over the period of last 5 years.”) produces a range of heath care products, has an organisation structure, a manufacturing facility and apparently has a market for its products in South-East Asia. Further the disputed domain was registered over seven years ago.
The Panel therefore finds that although the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the use of the disputed domain name, the evidence is that the Respondent has been using the domain name in connection with a bona fide offering of goods or services before notice of the dispute was made. The requirement of paragraph 4(a)(ii) of the Policy is therefore not satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative are:
(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 web site 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 web site or location or of a product or service on your web site or location.
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent has registered and has used the disputed domain name in bad faith. Although there is a developing view that in certain circumstances this requirement should not be strictly enforced by Panels, such that a complaint should be successful when a complainant can prove either bad faith use or bad faith registration (see Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716) the consensus view is that the requirements are conjunctive. That is, a complainant must prove both bad faith registration and bad faith use in order to satisfy the requirements of paragraph 4(a)(iii). The Complainant bears the onus of proof in these matters.
In its claim, the Complainant states that, as the Respondent is a resident of Australia, and Newimage Cosmetics is a company registered and domiciled in Australia there is little doubt that the Respondent would have been aware of the Complainant's name and reputation long before the registration of the domain name. Further, as an apparent competitor in the cosmetics and personal care market, there is little doubt that the Respondent was at all material times aware of the Complainant's rights in respect of the name "Bathox" prior to registration of the domain name. The Complainant conjectures that, as the Respondent has failed to demonstrate any right or legitimate interest in the BATHOX trademark that the Respondent’s registration of the disputed domain name was only to take advantage of the Complainant’s reputation in the name “Bathox”.
However, according to the Respondent’s correspondence, it does not sell any products in Australia that are branded with the “Bathox” name. On March 1, 2008 Haresh Bhojwani, the managing director of Newimage Cosmetics, wrote to Watermark, the patent and trademark attorneys then acting on behalf of the Complainant to advise that:
“Newimage Cosmetics is not selling any products in Australia that are branded ‘Bathox’, please also note Newimage Cosmetics specializes in the business of Deodorants. Please note, that our website ‘www.bathox.com’ is merely provided for our overseas clients in India, and the fact that we are seeking distributors in India is pasted all over our website, we have spent thousands of dollars promoting our website in India, and do not intend removing it from the web. We deny that we are selling any products labelled ‘Bathox’ in Australia, in fact, we do not sell any products labelled ‘Bathox’ in any part of the world, as such we cannot understand why you would think that we are misleading or passing of as ‘Bathox’.”
Despite the statement of the Complainant that “it primarily manufactures and distributes personal care and hygiene products and has done so for 40 years”, its earliest trademark registration was only in respect of a single product, bath salts. The disputed domain name is a top level gTLD “.com” registration and the Complainant provides no evidence of any other jurisdiction in which the BATHOX had a similar recognition prior to the registration of the disputed domain name in 2004. It was only in December 2006, two years after the registration of the disputed domain name that the Complainant registered the trademark BATHOX in respect of a wider classification of bath and shower products. Also according to the information it provided, the Complainant has no business in India. However, a search of the Indian Government’s Registrar of Trade Marks website discloses that the Complainant has now registered the BATHOX mark for India in Class 3 and 5, as of September 6, 2010.
As was discussed in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the Policy is framed primarily to assist with the speedy dislodgement of cyber squatters and deal with the registration of domain names for purposes that are antithetical to the use of trademarks for proper business purposes. The Policy is not designed to resolve all disputes relating to domain names and it may be more appropriate to seek recovery of a domain name through the courts on the basis of a trademark infringement action.
On balance, the Panel concludes that the Complainant has not provided sufficient evidence from which it can be concluded that the registration of the domain name by the Respondent was in bad faith. That being the case, there is no need to further consider the ongoing use of the disputed domain name. The Panel therefore concludes that the Complainant has failed to satisfy paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Derek M. Minus
Dated: February 13, 2012