WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dead Sea Premier Cosmetics Laboratories Ltd. v. Akbosh Media Network
Case No. D2013-2006
1. The Parties
The Complainant is Dead Sea Premier Cosmetics Laboratories Ltd. of Lod, Israel, represented by The GigaLaw Firm, United States of America (“US”).
The Respondent is Akbosh Media Network of Ormond Beach, Florida, US.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) <dead-sea-premier.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2013. On November 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 25, 2013, 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 on December 4, 2013. The Complaint was duly served upon the Respondent by email and by courier, and the records provided by the Center confirm that the courier copy of the Complaint was received and signed for at the Respondent’s address as verified in its contact details. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2013.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 9, 2014. 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 relevant facts are straightforward and can be summarized very briefly as follows:
The Complainant is an Israeli company founded in 1990 to produce and sell dermatological products based upon minerals derived from the Dead Sea in Israel. Since its creation it has developed and expanded its range of products and carries on business internationally in over 20 countries. It promotes its products at numerous websites including “www.premier-deadsea.com”.
The Complainant has registered the words PREMIER BY DEAD SEA PREMIER as a trade mark in at least the US and Israel. By way of example, US trade mark No. 4,173,366 for these words were registered on July 17, 2012 and Israeli trade mark No. 150387 was applied for on June 28, 2001 and registered on February 2, 2003.
The Domain Name was registered on June 24, 2004. It is being used for a web site which offers for sale dermatological products.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
The Domain Name is similar to its trade mark PREMIER BY DEAD SEA PREMIER in which it clearly has rights. The Respondent has no rights or legitimate interests in the term “Dead Sea Premier”. There is no other meaning associated with those words in that combination other than in relation to the Complainant.
The Domain Name was registered and is being used in bad faith. The Respondent is using the Domain Name in relation to a web site which falsely gives the impression that it is the Complainant’s own web site and is offering for sale products which may or may not be the Complainant’s own products. Furthermore, attempts by the Complainant to purchase products from the Respondent’s web site were not successful, no products being delivered and that the Respondent is not actually fulfilling orders it receives is further evidence of bad faith use.
The Complainant cites numerous previous UDRP decisions as to why the Domain Name is to be treated as having been registered and used in bad faith. It is not necessary to restate these cases in this decision.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Domain Name is identical with or confusingly similar to a trade mark 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 and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark PREMIER BY DEAD SEA PREMIER. Although no details have been provided as to turnover or sales figures, the filed evidence establishes the Complainant has carried on business internationally under the name “Dead Sea Premier” since 1990 and its products have clearly been marketed under that name on an international basis. Further, the Complainant has registered trade mark rights in the words “Premier By Dead Sea Premier”.
The Domain Name is confusingly similar to the PREMIER BY DEAD SEA PREMIER” trade mark. The words “Dead Sea” clearly relate to the geographical inland sea of that name, and the word “premier” is an ordinary English word, but the combination of these words is unusual and has no sensible meaning, other than in relation to the Complainant’s trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The only differences in the present case are the omission of the first use of the word “premier” and the word “by” and the inclusion of hyphens between the remaining words. These differences do not remove the manifest similarity.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark.
Accordingly, the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
“Dead Sea Premier” is in substance an abbreviation of the Complainant’s name and is a term which, taken as a whole, has no other readily apparent meanings other than in relation to the Complainant or its products.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Domain Name:
(i) before any notice to the Respondent of the dispute, the 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) the Respondent has been commonly known by the Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is 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 trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Domain Name or to use the PREMIER BY DEAD SEA PREMIER trade mark. The Complainant has prior rights in the PREMIER BY DEAD SEA PREMIER trade mark which precede the Respondent’s registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
As discussed under Section C below, the Panel does not find that the Respondent could be considered as a reseller of Complainant’s products having a right or legitimate interest in the Domain Name as it is not clear from the website at the Domain Name whether the Respondent is offering genuine products from the Complainant and the website does not accurately and prominently disclose the Respondent’s relationship with the Complainant.
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the PREMIER BY DEAD SEA PREMIER trade mark, and the evidence as to the international nature of the Complainant’s business under the PREMIER BY DEAD SEA PREMIER trade mark, and the confusingly similar nature of the Domain Name to the PREMIER BY DEAD SEA PREMIER trade mark, and the lack of any explanations from the Respondent as to why it registered the Domain Name lead the Panel to conclude the registration and use were in bad faith.
In the present case, the Panel concludes that it is inconceivable that the Respondent selected the Domain Name independently and without knowledge of the Complainant or its products. The Panel finds it extremely difficult to conceive of any use which the Respondent could make of the Domain Name which would be legitimate. Further the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
Further the Panel agrees with the Complainant that the web site which the Respondent operates at the Domain Name clearly gives the inaccurate and untrue impression that it is the Complainant’s own web site (for example the header of the website prominently contains (only) the text “Dead Sea Premier” and the web site’s “About Us” page leads with the headline “About Dead Sea Premier”). Even if the Respondent is offering genuine products sourced from the Complainant (the evidence as to whether this is the case is unclear), and is in fact fulfilling orders it receives (the Panel does not need to decide whether or not this is the case), in any event operating such a web site without making clear that the Respondent is not the Complainant, and is not connected with or authorised by the Complainant, is evidence of bad faith See for example Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211.
As a result, and applying the principles in the above noted decisions, the Panel finds that the Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name<dead-sea-premier.com> be transferred to the Complainant.
Nick J. Gardner
Date: January 16, 2014