WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Steiner Leisure Limited v. NIHA Inc.

Case No. D2017-0918

1. The Parties

The Complainant is Steiner Leisure Limited of Coral Gables, Florida, United States of America ("USA" or "United States"), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is NIHA Inc. of Portland, Oregon, USA.

2. The Domain Name and Registrar

The disputed domain name <elemischina.com> (the "Disputed Domain Name") 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 May 5, 2017. On May 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 9, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2017. On May 17, 2017, the Center received an email from a third party indicating that it is not related to the Respondent and its address and phone number has been used to register the Disputed Domain Name. The Respondent did not submit any response. Accordingly, the Center notified the Parties the commencement of panel appointment process.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on June 9, 2017. 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 USA company and its subsidiary Cosmetics Limited owns the Elemis brand which provides lifestyle-range of premium plant based products. The Complainant has produced registration information of several trademarks, inter alia: ELEMIS, United States trademark, Registration No. 1678043, registered on March 3, 1992; ELEMIS, European Union trademark, Registration No. 000836650, registered on October 15, 1999; ELEMIS, International trademark, Registration No. 778031, registered on March 26, 2002.

According to the WhoIs data and the Registrar's verification response, the Respondent is NIHA Inc. The Disputed Domain Name was registered on December 8, 2014 and it is valid until December 8, 2018. The Disputed Domain Name previously resolved to a website selling products under the Complainant's trademark, and currently resolves to an inactive website.

On May 17, 2017, the Center received an email from a third party indicating that it is not related to the Respondent and its address and phone number has been used to register the Disputed Domain Name.

5. Parties' Contentions

A. Complainant

The Complainant requests the Disputed Domain Name be transferred to the Complainant based on the following grounds:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is the registered owner of numerous ELEMIS trademarks which are well-known worldwide. The Disputed Domain Name <elemischina.com> is confusingly similar to the Complainant's ELEMIS trademark since it reproduces the ELEMIS trademark in its entirety while merely adding the geographically descriptive term "China" that does not grant distinctiveness to the Disputed Domain Name. Thus, the Disputed Domain Name is confusingly similar to the Complainant's ELEMIS trademarks.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant has never given authorization or permission to the Respondent to register or to use its ELEMIS trademarks. The Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant. The Respondent is not commonly known by the Disputed Domain Name, which evinces a lack of rights or legitimate interests. The absence of rights and legitimate interests is further evidenced by the fact that the Respondent used the Disputed Domain Name to resolve to a website that constitutes a reproduction of the ELEMIS official website belonging to the Complainant as well as offered and attempted to sell products branded with the ELEMIS trademark. The Respondent's attempt to pass off the Disputed Domain Name as being affiliated with the Complainant proves that Respondent does not have rights or legitimate interests in the Disputed Domain Name. The Respondent is not making a bona fide offering of goods or services or legitimate, noncommercial fair use of the Disputed Domain Name. The Respondent's inclusion of the Complainant's logo on the Disputed Domain Name's browser tab demonstrates a direct effort to take advantage of the fame and goodwill that the Complainant has built in its ELEMIS brand.

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

The Complainant's ELEMIS trademarks are well-known worldwide and the ELEMIS trademarks were registered many years before the Disputed Domain Name was registered. The Disputed Domain Name <elemischina.com> is confusingly similar to the Complainant's domain name <elemis.com> and ELEMIS trademarks, registered and widely used by the Complainant since 1989, many years before the Disputed Domain Name was registered, reproducing the ELEMIS trademarks, with the mere addition of the geographical term "china". It is therefore highly unlikely that the Respondent was unaware of the existence of the Complainant and its well-known trademark in the field of spa services and beauty products when it registered the Disputed Domain Name. Prior to receiving the Complainant's cease-and-desist letter, the Disputed Domain Name resolved to a website that was a reproduction of the Complainant's website and online store, which suggests the Respondent used the Disputed Domain Name to cause consumer confusion in an attempt to profit from such confusion. The Respondent's actions created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name, and the Respondent was using the fame of the Complainant's trademarks to improperly increase traffic to the website listed at the Disputed Domain Name for the Respondent's own commercial gain. It is well established that such conduct constitutes bad faith. Further, the Respondent's use of the Disputed Domain Name constitutes a disruption of the Complainant's business and qualifies as bad faith registration. The Respondent has ignored the Complainant's attempts to resolve this dispute outside of this administrative proceeding. Therefore, the Disputed Domain Name was registered and used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Procedural Issues

Contentions from the Third Party

On May 17, 2017, the Center received an email from a third party (the "Third Party") indicating that it is not related to the Respondent and its address and phone number has been used to register the disputed domain name. The Third Party further provided WhoIs information regarding a domain name registered and held by itself as evidence. The Third Party also asserted that it is not associated with the Respondent or the Disputed Domain Name.

Comparing the WhoIs information of the Third Party's own domain name and the WhoIs information of the Disputed Domain Name, it appears that the Respondent used the misspelled name of the Third Party as its registrant name when registering the Disputed Domain Name. Furthermore, the Respondent copied and used the address and phone number of the Third Party, while replacing the Third Party's email address. The Third Party asserted that it is not associated with the Respondent or the Disputed Domain Name. Given this, the Panel is satisfied that the Respondent intentionally abused the misspelling of the Third Party's name and correct information of the Third Party's phone number and address to register the Disputed Domain Name, in order to hide its true identity. The Panel also concludes that the Third Party is not the correct Respondent in this proceeding and not relevant to this proceeding.

According to previous UDRP decisions, where the name of an innocent individual has been adopted for the purpose of impersonating that individual, it is customary for the Panels to redact that individual's name from the record of this proceeding (see KWM Brands Pte Limited and King & Wood Mallesons v. Registration Private, Domains By Proxy, LLC / Name Redacted, WIPO Case No. D2015-1452). However, those cases apply to the situation when the name of the Respondent is adopted for the purpose of impersonating that individual/company. In this case, the Respondent registered the Disputed Domain Name in a name which is an apparent misspelling of the Third Party's name rather than a complete reproduction of the Third Party's name. The Panel believes that it is not necessary to redact the name of the Respondent, as the Respondent's name is not identical to the name of the Third Party, and it is clear that the Third Party is not relevant to this proceeding. Therefore, there is no need to redact the Respondent's name in order to protect the Third Party.

7. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that "[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]"

The Complainant has established that it is the owner of the ELEMIS trademarks.

The Disputed Domain Name, <elemischina.com>, incorporates the ELEMIS trademark in its entirety with the addition of the term "China", and the generic Top-Level Domain ("gTLD") ".com". The addition of the term "China" and the gTLD ".com" do not distinguish the Disputed Domain Name from the Complainant's ELEMIS trademark. The only distinctive part of the Disputed Domain Name is the "elemis" element, which contains the Complainant's trademark in its entirety. Furthermore, the addition of geographical term "China" does not mitigate the confusing similarity between the Disputed Domain Name and the ELEMIS trademark.

The Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant's ELEMIS trademark. The condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that "[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]"

Paragraph 4(c) of the Policy sets out the following circumstances "[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent's] rights or legitimate interests to the [disputed] domain name for the purposes of paragraph 4(a)(ii) [of the Policy]:

(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

The consensus view of UDRP panels on the rights or legitimate interests of a reseller or distributor under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), whereby: "[r]esellers, distributors, or service providers using a domain name containing the complainant's trademark to undertake sales or repairs related to the complainant's goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the "Oki Data test", the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant's relationship with the trademark holder; and (iv) the respondent must not try to "corner the market" in domain names that reflect the trademark. […]." (see also, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; National Association of Realtors v. John Fothergill, WIPO Case No. D2010-1284.)

The Complainant has established it is the owner of the ELEMIS trademark and confirmed that it has no connection or affiliation with the Respondent. The Complainant also states that no authorization was granted to the Respondent to use the trademark.

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.

The Respondent did not submit any evidence or allegation to show that it has rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy in respect of the Disputed Domain Name. The Respondent did not allege nor provide evidence to establish that it is a legally authorized reseller of the Complainant. The Respondent does not accurately and prominently disclose its relationship with the Complainant. Therefore, the Respondent cannot claim that this provides the Respondent with rights or legitimate interests in the Disputed Domain Name.

According to the record in the WhoIs database, there is no evidence showing that the Disputed Domain Name has any connection with the Respondent's name or the Respondent is commonly known by the Disputed Domain Name. The Disputed Domain Name appears to have been used to direct Internet users to a website for commercial gain, which is a commercial use.

Based on the above, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that "[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent's] domain name has been registered and is being used in bad faith".

Paragraph 4(b) of the Policy explicitly states, in relevant part, that "the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] web site or location or of a product or service on [the respondent's] web site or location."

The Complainant's ELEMIS trademark has been registered in many jurisdictions in the world and the Respondent chose to use the ELEMIS trademark as the only distinctive part of the Disputed Domain Name. No allegation or evidence suggests that the Respondent selected the ELEMIS trademark as used in the Disputed Domain Name for any reason other than the reputation of the Complainant's trademark. Furthermore, the screenshot of the website to which the Disputed Domain Name previously resolved shows that the Respondent was aware of the Complainant's trademark and such intentional registration shows the bad faith of the Respondent. Therefore, the Panel confirms that the Disputed Domain Name was registered in bad faith.

The Respondent used the ELEMIS trademarks on the website to which the Disputed Domain Name previously resolved. The screenshots of the website indicate that the website to which the Disputed Domain Name previously resolved featured the ELEMIS brand and trademarks and offered for sale of the Complainant's own skincare products, which are also sold on the Complainant's website under the domain name <elemis.com>. On the bottom of the website, there were an email address "[…]@elemischina.com" as well as a declaration "© 2005-2016 Elemis", which include the Complainant's ELEMIS trademarks in entirety. These features make the website to which the Disputed Domain Name resolved appear to be an official website of the Complainant or one of the Complainant's affiliates. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion. The Panel therefore concludes that the Disputed Domain Name was used in bad faith.

As the Disputed Domain Name has been registered and is being used in bad faith, the condition of paragraph 4(a)(iii) of the Policy has been fulfilled.

8. Decision

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 <elemischina.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: June 21, 2017