WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Finders International Limited v. Dead Sea Tour Service / U-Catalog Company Limited
Case No. D2013-2013
1. The Parties
The Complainant is Finders International Limited of Goudhurst, Kent, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Withers & Rogers LLP, United Kingdom.
The Respondent is Dead Sea Tour Service / U-Catalog Company Limited of Bangkok, Thailand.
2. The Domain Name and Registrar
The disputed domain name <deadseaspamagik.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2013. On November 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 3, 2014.
On November 26 and 27, 2013, Respondent U-Catalog Company Limited (“U-Catalog”) sent three email communications to the Center.
The Center verified that the Complaint together with the amended 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 January 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2014. The Respondent did not file a formal Response. Accordingly, the Center informed the parties of the commencement of the panel appointment process on January 29, 2014.
The Center appointed Andrew F. Christie as the sole panelist in this matter on February 3, 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.
On February 24, 2014, the Panel issued Administrative Panel Procedural Order No. 1 (hereafter “the Procedural Order”), requesting: (i) the Complainant to affirm or correct certain apparently erroneous statements contained in the amended Complaint; (ii) the Complainant to provide information and evidence about the distributor arrangement that previously existed between the Complainant and the Respondent; (iii) the Respondent to file a translation into English of text in Thai contained in a trademark registration document submitted by the Respondent; (iv) the Respondent to provide information and evidence about the business conducted by the Respondent under its Thai trademark; and (v) the Respondent to respond to matters contained in any submission by the Complainant pursuant to the Order. The Complainant and the Respondent submitted material in response to the Procedural Order on February 28, 2014, and March 10, 2014, respectively.
4. Factual Background
The Complainant is in the business of manufacturing skin care products. The Complainant is the owner of United Kingdom and United States of America (United States) trademark registrations for DEAD SEA SPA MAGIK, filed September 21, 1999, and March 20, 2000, respectively. It is also the owner of a European Community trademark registration for DEAD SEA MAGIK filed May 12, 1997 and of a United Kingdom trademark registration for DEAD SEA SPA filed December 5, 2000. All of the trademark registrations are in class 3, in respect of skin care treatment preparations and related products.
The Complainant has been using its DEAD SEA SPA MAGIK trademark since at least 1984. Products bearing the trademark are sold in 33 countries, with an approximate annual turnover of USD 3 million. For an unspecified period of time until December 9, 2003, the Complainant sold products bearing its trademark to an entity in Thailand called Diamond Brothers Group (hereafter “DBG”), for on-sale in that country. DBG did not fulfill its payment obligations, and as a result the Complainant wrote off as a bad debt the amount of GBP 3,149 owing to it from the DBG.
The disputed domain name was registered on December 7, 2008. As of December 30, 2013, the disputed domain name resolved to a website at which it was stated: “DEADSEASPAMAGIK is Registered Thailand Trademark Trademark ID: 916504 Protected by Intellectual Property Thailand Law. Owner: U-CATALOG Company Limited Thailand. Registration at Department of Intellectual Property, Ministry of Commerce,Thailand.”
In response to the Procedural Order, the Complainant provided an extract from the Internet archive Way Back Machine showing that on May 27, 2013, the disputed domain name redirected to the website at “www.dgb.co.th”, being a website for DBG. Screenshots of that website dated February 27, 2014, show it stating that DBG distributes products under the name “Deadsea spa magik”. The Complainant also provided a copy of email communications between it and Ekasak Preecha, between June 2, 2012 and June 9, 2012. In those communications, Ekasak Preecha offered to sell the disputed domain name to the Complainant for an amount the Complainant asserts was USD 500,000. According to the Complainant, Ekasak Preecha is known to it as a representative of DBG.
5. Parties’ Contentions
The Complainant is the registered owner of the trademarks DEAD SEA SPA MAGIC, DEAD SEA MAGIK and DEAD SEA SPA dating from at least as early as 1999. The Complainant contends that the disputed domain name wholly reproduces the Complainant’s trademark DEAD SEA SPA MAGIK and is therefore confusingly similar to its trademarks.
The Complainant contends that the Respondent does not have any right or legitimate interest in the disputed domain name because: (i) its use is intended to gain an unfair commercial advantage by diverting customers of the Complainant to the Respondent’s website; (ii) consumers will access the Respondent’s website in the mistaken belief that it is the website of the Complainant and is therefore misleading and confusing consumers; and (iii) it will tarnish the reputation and goodwill that the Respondent [this statement was confirmed by the Complainant in its response to the Procedural Order] has established in its trademarks.
The Complainant contends that the disputed domain name has been registered and used in bad faith because: (i) it was registered in order to prevent the Respondent [this statement was confirmed by the Complainant in its response to the Procedural Order] from reflecting its registered trademark in a corresponding domain name; (ii) it has the primary purpose of disrupting the business of the Complainant; (iii) there will be loss of sales to the Complainant because consumers will access the Respondent’s website in the mistaken belief that it is the Complainant’s; and (iv) the Complainant’s trademarks will be tarnished, given the reputation and high quality of the goods manufactured and sold by the Respondent [this statement was confirmed by the Complainant in its response to the Procedural Order].
No formal response to the amended Complaint was received from the Respondent. Respondent U-Catalog did, however, send three email communications to the Center, the primary content of which was to the effect that: (i) it had registered the disputed domain name in 2008; (ii) it had used the disputed domain name “about 5 years ago in Thailand, Asia zone not euro zone”; and (iii) it had registered DEADSEASPAMAGIK as a trademark in Thailand for the purpose of registering the disputed domain name (and attaching a document, in the Thai language, that was asserted to be a Thai trademark registration certificate). In response to the Procedural Order, a person named “Ekasak P.”, acting on behalf of Respondent U-Catalog, sent a copy of the alleged Thai trademark registration certificate on which was printed English translations of the Thai text.
6. Discussion and Findings
A. Identical or Confusingly Similar
When the gTLD extension is ignored, the disputed domain name consists of the Complainant’s DEAD SEA SPA MAGIK registered trademark. Thus, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its DEAD SEA SPA MAGIK registered trademark. The evidence provided by the Complainant shows that the disputed domain name has been used to resolve to a website at which it is stated DEADSEASPAMAGIK is a Thai registered trademark owned by Respondent U-Catalog, but which otherwise appears to be inoperative. Respondent U-Catalog submitted a document that appeared to be an application to register DEADSEASPAMAGIK in Thailand in class 3 for “cosmetic products using for treatment facial and body”, but did not provide evidence that the application had resulted in registration of the trademark. Furthermore, Respondent U-Catalog provided no details as to what, if any, business it conducts, and provided no explanation of the connection, if any, between its business and the disputed domain name and the alleged Thai registered trademark – other than the admission that “i register thailand trademark so I can register this domain”. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Furthermore, the Respondent has not provided any evidence that it has been commonly known by the disputed domain name. In the absence of any evidence that the Respondent is commonly known by the disputed domain name (or the alleged Thai trademark) or conducts a bona fide business under the disputed domain name (or the alleged Thai trademark), it can be concluded, on the balance of probabilities, that the intention of the Respondent in registering the disputed domain name (and, most likely, the alleged Thai trademark) was to capitalize on the value of the Complainant’s reputation in its substantially earlier-registered identical trademark. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered nearly a decade after the Complainant first registered its DEAD SEA SPA MAGIK trademark. The evidence on the record provided by the Complainant with respect to the use of its DEAD SEA SPA MAGIK trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent knew of the Complainant’s DEAD SEA SPA MAGIK trademark, and knew that it had no rights or legitimate interests in the disputed domain name. The Respondent has used the disputed domain name to resolve to a website at which it is stated, in English, that DEADSEASPAMAGIK is a registered trademark owned by Respondent U-Catalog. Whether or not this is true in relation to the alleged Thai trademark, it is not true in relation to the earlier United Kingdom and United States trademark registrations of DEAD SEA SPA MAGICK, which are owned by the Complainant. The fact that the website statement is in English suggests that the primary audience for the statement about ownership of the trademark registration is an English-speaking audience. The Panel concludes, on the balance of probabilities, that the Respondent is intentionally seeking to mislead an English-speaking audience into believing there is some association between Respondent U-Catalog and the Complainant. In addition, the Complainant asserted, and the Respondent did not deny, that Ekasak Preecha, who submitted a response to the Procedural Order on behalf of Respondent U-Catalog, offered to sell the disputed domain name to the Complainant for USD 500,000. For all these reasons, the Panel is satisfied that the disputed domain name has been registered and is being used in bad faith.
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 <deadseaspamagik.com> be transferred to the Complainant.
Andrew F. Christie
Date: March 16, 2014