WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roberta�s, Inc. v. Rick Falck
Case No. D 2001-0042
1. The Parties
The Complainant is Roberta�s, Inc., 24 West Franklin Street, Shelbyville, Indiana, 46176, USA.
The Respondent is Rick Falck, 101-1980 West 1st Avenue, Vancouver, BC V6J 1G6, Canada.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is "", which is registered with Network Solutions, Inc.
3. Procedural History
The Complaint was received by WIPO by email on January 9, 2001, and in hard copy on January 12, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that "" ("the Domain Name") was registered through Network Solutions Inc. and that Rick Falck ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On January 18, 2001, WIPO notified the Respondent of the Complaint by e-mail, post/courier and fax. The Response was received by WIPO on February 7, 2001. WIPO issued an Acknowledgement of Respondent�s Response on February 8, 2001.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel�s Decision is March 6, 2001.
4. Factual Background
In 1997 the Complainant "adopted the terminology PURE ESSENCE as its exclusive proprietary trademark identifying itself as the source of its aromatherapy delivery system, which system comprises an electric aerator/air freshener fan, which is packaged together with one or more vials which contain a variety of scented aromatherapy oils which themselves constitute an integral component of the Complainant�s aromatherapy delivery system."
On August 21 1997, the Complainant applied to register the word mark PURE ESSENCE in the United States for air fresheners in Class 5.
On March 1 1998, the Respondent registered the Domain Name.
In October 1998 the Complainant learnt of the existence of the Domain Name registration and registered �� as a domain name.
On February 9, 1999, the Complainant�s trademark application referred to above matured into US registration number 2,222,417.
In about May 1999, the Complainant visited the Respondent�s website at "www." and found a "Guestbook" inviting visitors to leave messages or inquiries on the site. Over the course of the next few months the Complainant checked that website and found among the messages a number of messages referring to the Complainant and its products.
The website gave no indication as to the Respondent�s activities, so the Complainant on a date unknown left a message in the "Guestbook" inquiring as to what products the Respondent sold. The Complainant has never received a reply to that message.
On December 2, 2000, the Complainant sent a cease and desist letter to the Respondent drawing the Respondent�s attention to the Respondent�s rights and seeking inter alia transfer of the Domain Name. On December 21, 2000, the Respondent replied by email in the following terms:
"I was surprised to receive your letter to-day. I have owned [the Domain Name] for two years with plans in the works to build a business marketing essential oils and related products. You say in your letter that this may cause problems for your client. What do you have in mind when you say this can be solved by arranging to transfer [the Domain Name] from me to your client?"
The correspondence continued with a letter from the Complainant dated February 14, 2000, reiterating the Complainant�s position. The Respondent replied on March 24, 2000. He stated that when he registered the Domain Name he was unaware of the existence of the Complainant and its products. He stated that he had no intention of causing the Complainant economic harm. He went on "Nor do I wish to experience any economic harm due to your client�s recent trademark registration, and I expect compensation from your client in this regard." He concluded "Accordingly, I look forward to Roberta�s fair and equitable offer in US dollars to compensate for the delays and extra effort required to make such changes to my business plans. If such an offer is considered �fair and equitable�, this matter can be resolved immediately".
The correspondence terminated with a letter from the Complainant dated July 27, 2000, stating that the Complainant was not prepared to compensate the Respondent and that if the Respondent did not comply with the Complainant�s transfer request within ten days, "[the Complainant] would be forced to consider alternative approaches to resolving this problem".
5. Parties� Contentions
A. Complainant
The Complainant�s contentions are difficult to precis and are reproduced largely verbatim.
The Domain Name is virtually identical to and/or confusingly similar to Complainant�s proprietary trademark PURE ESSENCE®.
At least as early as 1997, Complainant adopted the terminology "PURE ESSENCE" as its exclusive proprietary trademark identifying itself as the source of its aromatherapy delivery system, which system comprises an electric aerator/air freshener fan, which is packaged together with one or more vials which contain a variety of scented aromatherapy oils which themselves constitute an integral component of Complainant�s aromatherapy delivery system. The oil contained in these vials is applied by the user to a repository located on the inside of the aerator/air freshener, which aerator/air freshener device is then activated by the user to disburse the scent of the oil in connection with the aromatherapy procedure. In addition to incorporating these aromatherapy oils as an integral part of its aromatherapy delivery system, Complainant also sells individual vials of its various aromatherapy oils under its exclusive proprietary trademark PURE ESSENCE®.
Since at least as early as 1997, Complainant has affixed its proprietary trademark PURE ESSENCE® to its aromatherapy delivery system and to its related aromatherapy oil vials and has deposited these items into commerce in both the United States of America and Canada. Complainant has continued to use its proprietary trademark PURE ESSENCE® substantially without interruption up to and including the present time.
Complainant is the owner of the valid and currently-subsisting U.S. Registration Number 2,222,417 for its proprietary trademark PURE ESSENCE®. A true and correct copy of such Registration is appended to this Complaint.
The Domain Name is virtually identical and is highly similar, and confusingly so, to Complainant�s proprietary trademark PURE ESSENCE®. In this connection, initially Complainant would note that the Domain Name "" is, patently, highly similar in both its sound and appearance to complainant�s proprietary trademark PURE ESSENCE®, the only distinguishing characteristics being: (i) the Domain Name�s "telescoping" of the words "PURE" and "ESSENCE" into one word; and (ii) the Domain Name�s juxtaposition of the "COM" tld name to the Domain Name�s "telescoped" rendition of Complainant�s trademark PURE ESSENCE®. Moreover, these two lone distinguishing characteristics appear to be dictated solely by the technical requirements of the Internet itself, which render it impossible for Respondent: (a) to register the terminology "PURE ESSENCE" per se as a domain name, on account of the space which exists between the two words; and (b) to register a commercial domain name without including as a component of that domain name the tld ".com". In sum, it is evident that these two, technically-dictated alterations to Complainant�s trademark PURE ESSENCE® can not adequately distinguish the Domain Name from Complainant�s proprietary trademark PURE ESSENCE® in any significant respect.
Respondent should be considered as having no rights or legitimate interest in respect of the Domain Name due to the following circumstances:
Complainant is unaware of any credible evidence that, prior to receiving Complainant�s December 2, 1999 letter notifying Respondent of this dispute, Respondent had used, or had demonstrably made any 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--Complainant is unaware of any use of the Domain Name by Respondent of such a nature as would confer upon Respondent any rights or legitimate interests in respect of the Domain Name. In this connection, Complainant would state that the first it heard of Respondent�s connection with the terminology "PUREESSENCE" was when Complainant itself attempted to register the domain name "" with the Registrar Network Solutions, Inc. in 1998. Upon conducting the customary pre-registration domain name search, Complainant discovered that the terminology "" was already "taken", the indicated registrant being Respondent Falck. As a result, Complainant was required to register a "second-choice" domain name instead, that being the domain name "pure_". Upon establishing its website for its aromatherapy products shortly after registering this alternative domain name, Complainant�s principals were dismayed to find that such a registration arrangement resulted in Complainant�s website�s crucial link and visitor information being displayed in a position subordinate to Respondent�s own website�s link and visitor information in internet search results. Moreover, Complainant�s personnel also noted that entering the PURE ESSENCE search terminology on various search engines often resulted in a searcher being provided with Respondent�s website address, with Complainant�s own website�s address and information not appearing at all. This caused Complainant�s personnel concern that Respondent�s Domain Name registration and use served to divert potential customers of Complainant to Respondent�s website instead, thereby depriving Complainant of potential customers for its aromatherapy products. At that time, however, Complainant had no evidence that Respondent�s website itself might either concern aromatherapy products, might be intended to concern aromatherapy products in the future, or was actually diverting website visitors/potential customers to Respondent�s site at the expense of Complainant. However, such evidence was not long in coming. During May, 1999, Complainant accessed Respondent�s website; in reviewing its content, Complainant noted that Respondent�s website did not contain any references to aromatherapy; in fact, Complainant noted then that Respondent�s website did not concern any particular subject at all. Rather, Complainant noted then, Respondent�s website consisted solely of a nearly-blank "home page" and a "Guestbook" at which site visitors might direct messages, inquiries, and so forth. Out of curiosity, Complainant then accessed that website�s "Guestbook" page and noted several inquiries, apparently none of which up to that time concerned aromatherapy products; in fact there was only one inquiry at the time that appeared to be a product inquiry at all: an inquiry dated May 23, 1988 [sic] which read: "I have ms [sic] and am curious about supplements. The few remaining inquiries that appeared in the Guestbook at the time Complainant first accessed it did not appear to be product inquiries. In order to attempt to determine what, if any, products might be the subject of Respondent�s website, Complainant�s President, Mr. Eric Wallien, e-mailed the following inquiry to the Guestbook : "What products do you sell?". No response to this inquiry was ever received; accordingly, Complainant continued to remain unaware of the nature of Respondent�s business, or whether the website was even associated with a business at all. However, a short time later, Complainant�s President again accessed the website to determine whether any additional content might be present which would clarify the website�s commercial purpose, if any. On this occasion, Mr. Wallien first discovered evidence that visitors to Respondent�s website were indeed doing so thinking, mistakenly, that Respondent was Complainant. Specifically, at this time Mr. Wallien noted the following Guestbook inquiry, dated May 23, 1999:
"I purchased a Pure Essence Aroma Fan and Therapeutic Blend air freshener from a booth in Ontario Mills Mall in Ontario CA. I have been trying to locate Roberta�s, Inc., in Shelbyville, IN to purchase more of this oil. Is this your product?"
Mr. Wallien also noted an inquiry directed to the Guestbook and dated August 7, 1999:
"I�d like more information about your Aroma Fan and Aromatherapy products" (Footnote 1)
Mr. Wallien also noted the following inquiry, dated September 19, 1999:
"I just purchased you [sic] aroma fan and I love it."
Also noted by Mr. Wallien was the following inquiry:
"We were very much taken by the display at the county fair, Raleigh, NC.
The presentation and helpful hint as to the use of your product was EXCELLENT!!!!!" (Footnote 2)
As Complainant now possessed incontrovertible evidence of actual confusion occurring as between Respondent�s website and Complainant and the diversion of potential sales from Complainant, Complainant�s President consulted legal counsel to determine what might be done to address this troubling situation, and to assure that it did not escalate even further. Even at this point, however, Complainant had no evidence that Respondent was engaged in, or planning to engage in the sale of competing aromatherapy products.
Since at this point Complainant had no reason to doubt Respondent�s good faith, Complainant�s efforts were directed toward preparing a letter to be sent to Respondent apprizing him of the damage being occasioned by Respondent�s "" website, informing Respondent of Complainant�s prior legal rights to the PURE ESSENCE® trademark, and attempting to enlist Respondent�s cooperation in effecting the voluntary transfer to Complainant of the Domain Name registration. Accordingly, Complainant mailed to Respondent a letter dated December 2, 1999, which set out Complainant�s legal position, demanded that Respondent cease and desist from the wrongful activities described above, and requested that Respondent cooperate in transferring the registration of the Domain Name to Complainant. On December 21, 1999, counsel to Complainant received an email from Respondent, in which Respondent asserted that he had "owned" the Domain Name for two years, with plans in the works to build a business marketing essential oils and related products. This was the first time that Complainant was made aware--by Respondent�s own admission--that Respondent�s intention indeed was to use the Domain Name and associated website in connection with the sale of products directly competing with those that Complainant itself had been selling under its proprietary trademark PURE ESSENCE®.
Based upon these facts, Complainant submits that it is unaware of any evidence that prior to Respondent�s receiving Complainant�s December 2, 1999, letter notifying him of Complainant�s objections, Respondent either had used or had demonstrably made 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. To the contrary, the available evidence supports the conclusion that it was only subsequent to having received Complainant�s December 2, 1999, letter, that there arose supposed "evidence" of Respondent�s preparations to so use the Domain Name. That "evidence" consists solely of Respondent�s wholly-unsupported assertion--subsequent to his having received Complainant�s December 21, 1999, letter--that Respondent had marketing plans "in the works" prior to receipt of Complainant�s December 2, 1999, notice letter. Complainant submits that this wholly unsupported, uncorroborated and self-serving statement on Respondent�s part is no evidence at all of such preparations.
Moreover, there exists no evidence that Respondent has acquired any trademarks in the terminology PUREESSENCE, or in similar terminologies. Nor does any evidence exist that Respondent has used, or is using, the terminology PUREESSENCE in connection with the sale of any goods or services. Nor has Complainant�s search of both United States and Canada trademark office records identified any registration of the mark PUREESSENCE or similar terminology by Respondent.
In the absence of Respondent�s acquisition of any trademark rights in the Domain Name, Complainant is unaware of any evidence that Respondent, whether as an individual, business, or other organization, has been commonly known by the Domain Name--Moreover, in the absence of Respondent�s acquisition of any trademark rights in the terminology PUREESSENCE as has been established above, Complainant is unaware of any evidence that Respondent, whether as an individual, business, or other organization has been commonly known by the Domain Name. In fact, the available evidence is directly to the contrary: a review of Respondent�s original website�s "Guestbook" makes this clear, containing several inquiries based upon the visitor�s false impression that Respondent was, variously, a popular music group, a vitamin supplement provider, and, of course, Complainant. Not one of the pertinent email inquiries reflects any recognition of Respondent other than his being believed to have been someone else!
The evidence does not support any inference being drawn that Respondent is making a legitimate commercial or fair use of the Domain Name, without intent for commercial gain to divert misleadingly consumers or to tarnish the trademark. To the contrary, the available evidence strongly supports precisely the contrary conclusion. As has been discussed above, there are several instances where potential customers of Complainant were in fact diverted to Respondent�s website due to their misapprehension that they were communicating with Complainant. There is no evidence that any of these potential customers of Complainant�s were ever apprized by Respondent that in fact, his website was not that of Complainant Roberta�s, Inc. Finally, Respondent�s admission to Complainant on several occasions that the website was intended to market competing products demonstrates Respondent�s intent to divert misleadingly consumers from Complainant to Respondent�s website for commercial gain to result from sales of Respondent�s directly competing products to such inquiring--and confused--consumers. And as will be discussed below, the fact of Respondent�s subsequent transformation of his "skeletal" original website into a website with extensive content devoted exclusively to promoting the future sales of Respondent�s directly-competing products, establishes beyond cavil the wrongful nature of Respondent�s use of the Domain Name.
For the reasons discussed below, the Domain Name should be considered as having been registered and used by the Respondent in bad faith:
Circumstances exist which indicate that the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the complainant-owner of the trademark, i.e., the Complainant herein, or to a competitor of Complainant, for valuable consideration in excess of the Respondent�s out-of-pocket-costs directly related to the Domain Name
Respondent�s Demand for "Compensation"
As has been established above, counsel to Complainant wrote a letter to Respondent dated December 2, 1999, specifying Complainant�s objections to Respondent�s use and registration of the Domain Name, citing the specific instances of actual confusion, and requesting that Respondent transfer the Domain Name to Complainant. Respondent responded to Complainant�s letter by email message. Counsel to Complainant responded to this email in a second letter to Respondent dated February 14, 2000. In that letter, counsel to Complainant, among other things: (1) reiterated Complainant�s position as originally expressed in the December 2, 1999 letter; (2) advanced Complainant�s position that, in light of the admissions made in Respondent�s December 21 email message, Respondent�s use and registration of the Domain Name constituted infringement of Complainant�s proprietary trademark PURE ESSENCE® in both the United States and Canada; (3) made formal demand that Respondent cease and desist from further use of the terminology PUREESSENCE or similar terminologies; (4) reiterated Complainant�s earlier expressed request that under the circumstances, Respondent cease all further usage of the Domain Name or of any other terminology confusingly similar to Complainant�s proprietary trademark PURE ESSENCE®; and voluntarily transfer the Domain Name registration to Complainant. Finally, Complainant offered to assist Respondent with defraying costs associated with effectuating the Registrar�s transfer of the Domain Name registration from Respondent to Complainant
In response to Complainant�s 14 February letter, Respondent Falck replied by e-mail to counsel to Respondent on 11 March 2000, stating that he would not directly respond to that letter pending his conferring with his business associates and legal counsel. Subsequently, or about April 13, 2000, counsel to Complainant received a registered letter from Respondent Falck dated March 24, 2000. In this letter, Respondent either avoided responding directly to Complainant�s February 14, 2000 letter�s concerns altogether, or, in seemingly responding to them, in fact misconstrued seriously those concerns as they were stated in Complainant�s February 14 letter. Specifically, in his March 24 letter, Respondent Falck first simply repeats Complainant�s December 2 letter�s recitals of the instances of actual confusion occurring as early as May, 1999, while ignoring addressing the specific instances of such actual confusion recited there. Respondent�s March 24 letter then merely alleges--without factual support-- Falck�s lack of knowledge of Complainant�s "business.... products...or intent to register Pure Essence as a trademark" at the time Respondent Falck registered the Domain Name, without any factual support for that assertion. Respondent�s March 24 letter goes on to assert that Complainant�s current domain name "pure_" was registered "more than half a year after" Respondent Falck had registered the Domain Name. In his letter, the Respondent goes on to assert: "This domain name was freely invented for my use, "and at the time it did not correspond to "any existing U.S. trademark, and he again asserts his innocence regarding any intention on his part to cause Complainant any "economic harm."
Respondent�s March 24 letter then concludes: "Nor do I wish to experience any economic harm due to [Complainant�s] recent trademark registration, and I expect compensation from [Complainant] in this regard." Respondent Falck then quotes from Complainant�s 14 February 2000 cease-and-desist letter�s statement regarding Complainant�s offer to assist the Respondent in expediting the transfer of the Domain Name registration to Complainant, disingenuously, we think, professing to construe this statement as constituting an offer by Complainant to "compensate [Respondent] for the delays and extra effort required to make such changes to [Respondent�s] business plans (emphasis supplied)." In fact, no such offer was ever made by the Complainant at any time. The Respondent�s March 24, 2000, letter concludes by stating: "Accordingly, I look forward to Roberta�s fair and equitable offer in U.S. dollars to compensate for the delays and extra effort required to make such changes to my business plans. If such an offer is considered �fair and reasonable�, this matter can be resolved immediately(emphasis supplied)." Upon receiving Respondent�s March 24, 2000, registered letter on or about April 13, 2000, counsel to Complainant consulted with Complainant regarding what steps it might now be forced to take to attempt to resolve the situation, given the unresponsive nature of Respondent�s March 24 letter, and given Respondent�s now making his unjustified demand for "compensation". The steps considered by Complainant at this point included reviewing the various legal remedies which might be available to Complainant both in the United States and in Canada, consulting with Canadian counsel at a meeting at Canadian counsel�s offices in Ottawa, Ontario, Canada, as well as considering commencing an arbitration action pursuant to the ICANN Policy. During the course of this consideration of how further to proceed, counsel to Complainant received several further e-mails from Respondent, pressing Complainant to advance an offer of compensation in exchange for Respondent�s cooperation. Accordingly, counsel to Complainant wrote another letter to Respondent dated on July 27, 2000. In that letter, Complainant reiterated its earlier positions, and further, emphasized that at no time had Complainant ever offered to "compensate" Respondent for complying with what Complainant considers to have been its rightful demands.
Respondent�s Post-Notice Revision of Original Web Site to a Directly-Competing Aromatherapy Website
At some point subsequent to his receiving both Complainant�s December 2, 1999 and February 14, 2000 letters notifying him of Complainant�s objections to his Domain Name, Respondent not only continued to fail to comply with Complainant�s demand that he cease using the "PUREESSENCE" terminology and cooperate in the transfer of the Domain Name registration, but moreover, proceeded to completely re-vamp his original website. This new website�s content comprised an extensive cataloguing of the various aromatherapy oils, and further, advised visitors that a website feature which would enable visitors to purchase aromatherapy products from Respondent "on-line" would be "coming soon".
Based upon the actions of Respondent which have been described in detail above Complainant submits that the only reasonable inference to be drawn is that Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant, who owns PURE ESSENCE®, the trademark involved, or to a competitor of Complainant, for valuable consideration in excess of Respondent�s out-of-pocket costs directly related to the Domain Name. Tellingly, no statement of such out-of-pocket costs has ever been forthcoming from Respondent--only demands that Complainant make an offer "in U.S. dollars" to "compensate" Respondent for transferring the Domain Name to Complainant.
Circumstances exist which indicate that the Domain Name was registered in order to prevent Complainant, the owner of the trademark PURE ESSENCE®, from reflecting its mark in a corresponding domain name, and that Respondent has engaged in a pattern of such conduct-- Based upon the foregoing discussion and supporting evidence submitted herein, Complainant submits that the Domain Name was indeed registered by Respondent in order to prevent Complainant, the owner of the proprietary trademark PURE ESSENCE®, from reflecting that mark in the corresponding domain name ""-- unless Complainant paid Respondent "compensation" in excess of Respondent�s allowable "out-of-pocket" costs relating to the Domain Name as is contrary to the applicable ICANN Policy. Moreover, there also exists evidence that Respondent did indeed engage in a pattern of this wrongful conduct, since as has been noted above, Respondent�s original website employing the Domain Name created not only public confusion with respect to the Complainant, as has been discussed above, but also with respect to others employing the terminology PURE ESSENCE in connection with offerings of their own respective products and services: notably, the popular musical group PURESSENCE, as well as persons involved in the sale of vitamin supplements and hair care products.
Circumstances exist which indicate that the Domain Name was registered primarily for the purpose of disrupting the business of a competitor--Based upon the foregoing discussion, and particularly upon the discussion in I and II, above, the most reasonable inference that can be drawn is that Respondent registered the Domain Name primarily for the purpose of disrupting the business of Complainant. Those circumstances are as follows:
(i) The fact that Respondent�s registration and use of the Domain Name has disrupted, and presumably continues to disrupt Complainant�s business. To date, there have been numerous instances of actual confusion, including those instances appearing on Respondent�s website�s Guestbook ), as well as additional instances of actual confusion as are attested to by Complainant�s employee Georgia Wertz who made and filed an affidavit testifying to the fact that she had handled telephone enquiries from at least 100 customers and potential customers expressing confusion over the source of the Complainant�s products having visited the respondent�s website.
(ii) As discussed above, the apparent fact of Respondent�s continuing failure to disabuse his website visitors of their actual confusion regarding Respondent�s being the source of Complainant�s aromatherapy products;
(iii) As discussed above, the fact of Respondent�s failure to cease and desist from using the Domain Name after having received repeated requests from Complainant that he do so in light of Complainant�s ownership and registration of the trademark PURE ESSENCE®;
(iv) As discussed above, the fact of Respondent�s completely revising the website he maintains under the Domain Name to compete directly with Complainant�s website "pure_", and doing so after Complainant had notified Respondent of its objections to Respondent�s registration and use of the Domain Name, thus exacerbating the likelihood of increased confusion regarding the source of Complainant�s aromatherapy products marketed under Complainant�s registered trademark PURE ESSENCE®.
Circumstances exist which indicate that by using the Domain Name, Respondent intentionally attempted to attract, for financial gain, Internet users to Respondent�s website by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of the Registrant�s website and location or of a product or service on Complainant�s website and location. In support of this assertion, Complainant incorporates and restates here the foregoing discussion. Additionally, Complainant would note the manner in which Respondent gradually insinuated himself over time into a position where he directly competes with Complainant�s aromatherapy business--both on the Internet and otherwise: First, Respondent merely registered the Domain Name without using it at that time in any business whatever-much less the directly-competitive aromatherapy business. Complainant would submit that this registration was effected by Respondent without his possessing any trademark or other rights in the Domain Name which would justify an inference that Respondent had any legitimate commercial endeavor ongoing which would logically prompt Respondent to register this particular Domain Name, which is highly similar, if not virtually identical, to Complainant�s trademark PURE ESSENCE.® Next, after the Domain Name�s registration was obtained, Respondent then established a website using the Domain Name, but lacking any indication whatever of Respondent�s commercial intent, while nonetheless containing a "Guestbook" by which Respondent could accumulate names of persons interested in Complainant�s aromatherapy products, which Complainant had already promoted and sold for some time under its proprietary trademark PURE ESSENCE®. Clearly, this "Guestbook" has served the function of surreptitiously creating for Respondent a customer list for Respondent�s aromatherapy products--that customer list being composed of persons inquiring as to Complainant�s PURE ESSENCE® products on Respondent�s website in the mistaken belief that they are contacting Complainant about its PURE ESSENCE® aromatherapy products. Thirdly, in the face of having received repeated written notices of Complainant�s rightful claims, Respondent then drops any remaining pretensions, and completely over-hauls his original, seemingly-innocuous website design into a website promoting his own competing aromatherapy products; finally, Respondent makes a demand of Complainant for "compensation" in exchange for transferring the Domain Name to Complainant.
One must ask: What reasonable conclusion can possibly be drawn from the facts of this case other than that Respondent has wrongfully registered the Domain Name in contravention of the ICANN Policy incorporated into Respondent�s Registration Agreement? Respondent
The Respondent�s contentions are extensive, but the essential elements relevant to this procedure are short and straightforward, namely:
1. The expression PURE ESSENCE is highly descriptive and widely used throughout the Internet in the aromatherapy context i.e. in relation to essential oils etc. The Respondent produced substantial evidence in support.
2. When the Respondent registered the Domain Name he had no knowledge of the Complainant, its products or its interest in the name PURE ESSENCE and could not have any bad faith intent in relation to the Complainant.
3. The Respondent works with essential oils and supplies essential oils and has done so since at least March 1998. He has written articles and lectured on the subject. He registered the Domain Name with a view to creating a website through which essential oils were to be supplied. The Respondent produced to the Panel four affidavits made by associates and acquaintances of his swearing to the above and testifying too to the good character of the Respondent.
4. The "Guestbook" upon which the Complainant places some reliance was a creation of the Respondent�s host provider. The Respondent knew nothing about it and never looked at it, which is why the request for information put in by the Complainant was never answered.
5. The Respondent observes that over a two year period only 36 people are recorded as having visited the site and only four of those left messages relating to the Complainant.
The Respondent makes other submissions responding to the allegations over the Respondent�s delay in getting his website up and running and his request for compensation for transfer of the Domain Name. He also makes arguments based on the delay by the Complainant in raising the matter with him and in following the matter up thereafter. However, for reasons, which will become apparent, the Panel does not find it necessary to consider them further.
6. Discussion and Findings
General
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Identical or confusing similarity
Plainly, the Domain Name is substantially identical to a name in which the Complainant has rights and the Panel so holds.
Rights or legitimate interest of the Respondent
From the four affidavits filed on behalf of the Respondent it is plain that when the Respondent registered the Domain Name he had bona fide plans to supply essential oils through a website connected to the Domain Name. That will only not have been the case if the Respondent and the four deponents are conspiring not to tell the truth.
For the Panel to make a finding, which amounts to a finding of fraud, the Panel will need some very persuasive evidence. There is no such evidence. The Complainant�s trademark PURE ESSENCE is very descriptive and a name, which the Panel can quite understand a dealer in essential oils wishing to use. It is a trademark which was only in use for about a year prior to the registration of the Domain Name. The Complainant has produced no evidence as to the extent of its trade in Canada at that time, accordingly the Panel is utterly unable to conclude that the fame of the trademark must necessarily have come to the attention of the Respondent by March 1998. In the view of the Panel the overwhelming probability is that it had not.
The Panel notes that the Respondent elected to produce affidavits rather than contemporary documents to demonstrate his bona fides and notes too that the affidavits are in a somewhat perfunctory template form. Nonetheless, for the reasons given, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interest in respect of the Domain Name.
Bad Faith
If, as the Panel believes to be the case, the Respondent was unaware of the existence of the Complainant or its products at the date of registration of the Domain Name, the bad faith claim must fail.
For the record, the Panel has looked closely at the correspondence between the parties and can find nothing surrounding the Respondent�s request for compensation, which suggests bad faith. Assuming the Respondent�s plans to be bona fide, it was reasonable for the Respondent to seek compensation for any disruption caused to those plans by a transfer to the Complainant. The correspondence gives no hint as to what the Respondent might have regarded as reasonable.
Accordingly, and for the reasons given, the Panel finds that the Complainant has failed to prove that the Respondent registered the Domain Name in bad faith and is using it in bad faith.
7. Decision
The Complaint is dismissed
Mr Tony Willoughby
Sole Panelist
Dated: March 6, 2001
Footnotes:
1. AROMA FANÔ is another proprietary trademark used by Complainant for its Aromatherapy delivery system.
2. Complainant�s President operated a display booth at the county fair in Raleigh, NC from October 15 to October 24, 1999. Complainant�s President is unaware of any such similar display sponsored by Respondent at that fair; accordingly, the most reasonable inference to draw would be that this particular website visitor indeed thought Respondent was Complainant.
Full & Egal Universal Law Academy