WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sakura Properties, LLC v. Andre Jensen
Case No. D2016-2209
1. The Parties
The Complainant is Sakura Properties, LLC of Springville, Utah, United States of America (“United States”), internally represented.
The Respondent is Andre Jensen of Mernda, Melbourne, Australia.
2. The Domain Names and Registrars
The disputed domain name, <siselfit.com> (the “First Domain Name”), is registered with Crazy Domains FZ‑LLC and the disputed domain name, <sisellive.com> (the “Second Domain Name”), is registered with GoDaddy.com, LLC (collectively, the “Registrars”). The First and Second Domain Names are referred to collectively as the “Domain Names”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2016. On November 1, 2016, the Center transmitted by email to the Registrars requests for registrar verification in connection with the Domain Names. On November 2, 2016, the Registrars transmitted by email to the Center their verification responses 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2016.
On November 11, 2016 the Center received an email from the Respondent reading: “I’m a NON US CITIZEN and I’m not in any financial position to be represented ‘FAIRLY’. I don’t wish to represent myself as I could implicate a ‘FAIR’ outcome, I here by adjourn this proceeding until I am in a position to be represented adequately.”
The Respondent did not however submit any formal response. Accordingly, the Center notified the parties about the commencement of the panel appointment process on November 28, 2016.
In response to that notification the Respondent emailed the Center on November 29, 2016 stating: “I have replied to this matter. I don’t agree for you to proceed.” A similar email was received on December 8, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 7, 2016. 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 a Utah-based limited liability company. It trades under the name “Sisel” through a licensee, Sisel International LLC, in the cosmetics, pharmaceuticals, processed foods and beverages fields.
The Complainant is the registered proprietor of:
(i) United States Trade Mark registration No. 3555466 SISEL (word) in class 5 for a variety of dietary and nutritional supplements. The mark was applied for on August 30, 2006 and registered on December 30, 2008;
(ii) Australian Trade Mark registration No. 1153016 SISEL (word) in classes 3, 5 and 32 for a variety of goods in the body care, dietary and beverage sectors.
The First Domain Name was registered on March 2, 2015. The Second Domain Name was registered on July 23, 2015. The Domain Names are connected to parking pages of the Registrars.
On March 19, 2015 the Respondent opened a distributorship account with the Complainant’s licensee. According to the evidence of the Complainant (Annex 5) the account was terminated on March 19, 2016 for failure on the part of the Respondent to renew. Paragraph 4.2.3 of the distributorship agreement provides inter alia that “Distributors may not use or attempt to register any of SISEL’s trade names, trade marks, service names, service marks, product names, the Company’s name, or any derivative thereof, for any Internet domain name.”
On September 30, 2016 the Complainant wrote to the Respondent drawing the latter’s attention to its trade mark rights and inter alia seeking transfer of the Domain Names at the Complainant’s expense.
The Respondent responded by email the same day in these terms: “Hi thank you for your enquiry im no longer a distributor of sisel and would consider transferring the said domains pending the agreement to cover my holding cost of [USD] 5000 per domain please reply if you would like to proceed. Thank you.”
The correspondence continued with the Complainant repeating its position and the Respondent standing firm on his offer to transfer the Domain Names for USD 5,000 per domain name, but by his email of October 19, 2016 seeking in addition “reinstatement of my distributorship for 5 years paid.” The Complainant ultimately offered to purchase the Domain Names for AUD 250 per domain name, but no agreement was reached.
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names have been registered and are being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical 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 Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
B. Preliminary issue
As can be seen from the Respondent’s emails referred to in section 3 above, the Respondent has declined to respond to the Complaint on the basis that he cannot afford to employ fair representation and does not wish to represent himself. He has sought unilaterally to adjourn this administrative proceeding.
When the Respondent registered the Domain Names he entered into registration agreements with the Registrars. Those agreements incorporated the Policy. The Policy is in a standard form and the procedure is not susceptible to variation, save in specific circumstances e.g. paragraph 5(d) of the Rules, which provides inter alia: “At the request of the Respondent, the Provider [i.e. the Center] may, in exceptional cases, extend the period of time for filing of the response.” A similar power is provided to the Panel by way of paragraph 10(c) of the Rules.
Had the Panel been satisfied that there was a genuine need on the part of the Respondent for a limited extension, the Panel would have considered a request favourably. However, the Respondent has come forward with no exceptional circumstances and there is no indication given as to when the Respondent will be in a financial position to instruct a representative; nor has the Respondent given any proper explanation as to why he cannot adequately represent himself. In proceedings under the Policy many parties self-represent and panels are accustomed to dealing sensitively with unrepresented parties.
In the view of the Panel, the emails to the Center quoted in section 3 above do not constitute an adequate request for an extension of time for the Response.
Paragraph 14 of the Rules provides:
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel will now proceed to a decision and draw such inferences as it deems appropriate from the Respondent’s failure to respond.
C. Identical or Confusingly Similar
The Domain Names each incorporate the Complainant’s SISEL trade mark in full, combined with a dictionary word (“fit” in the case of the First Domain Name and “live” in the case of the Second Domain Name) and the “.com” generic Top-Level Domain (“gTLD”) identifier. The additional dictionary words do not in the view of the Panel detract from the prominence and distinctiveness of the trade mark. Moreover, it is well–recognised that under this element of the Policy it is permissible for panels to ignore the gTLD where, as here, its purpose is purely technical.
The Panel finds that the Domain Names are confusingly similar to the Complainant’s SISEL trade mark.
D. Rights or Legitimate Interests
The First Domain Name was registered at or around the time he was applying to the Complainant’s licensee for a distributorship agreement. The Panel finds that at that time he knew that the rights to the trade mark (one of the Complainant’s registrations is an Australian registration covering the Respondent’s home territory) lay with the Complainant or the Complainant’s licensee. Clearly he would not have been given any permission to register the First Domain Name (had he asked). Paragraph 4.2.3 of the distributorship agreement (quoted in section 4 above) makes clear the Complainant’s opposition to any use of its SISEL trade mark for domain names registered by third parties.
The Second Domain Name was registered after his distributorship had commenced and in flagrant breach of the said paragraph 4.2.3.
Under the circumstances the Panel cannot conceive of any basis upon which the Respondent might be said to have rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
E. Registered and Used in Bad Faith
The registration of the Second Domain Name made while the Respondent was subject to the distribution agreement and in breach of that agreement leads the Panel to conclude on the balance of probabilities that the Respondent’s motives in registering the Domain Names were in bad faith, probably with a view to establishing a negotiating counter in any discussions with the Complainant, and with the understanding that such registrations were not authorized.
In the event that is precisely how the Respondent has used the Domain Names, namely in an attempt to pressurize the Complainant into granting a five year “reinstatement” of the distributorship agreement and to extort a sum of USD 5,000 from the Complainant in return for transfer of the Domain Names. These are not the actions of a respondent acting in good faith.
The Panel finds that the Domain Names have been registered and are 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 Domain Names, <siselfit.com> and <sisellive.com>, be transferred to the Complainant.
Date: December 16, 2016