WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Melaleuca, Inc. v. Domains by Proxy, Inc./ Evon Smith
Case No. D2008-0305
1. The Parties
Complainant is Melaleuca, Inc., Idaho Falls, ID, United States of America, represented by Hawley Troxell Ennis & Hawley, LLP, United States of America.
Respondent is Domains by Proxy, Inc./ Evon Smith, St Elizabeth, Santa Cruz, Jamaica.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2008. On March 3, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On March 4, 2008, GoD, Inc. 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. The Center sent an email communication to Complainant on March 11, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 21, 2008.
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”), 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 Respondent of the Complaint, and the proceedings commenced on March 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 17, 2008.
The Center appointed Ross Carson as the sole panelist in this matter on April 25, 2008. 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 the basis of Whois search results for the domain name in dispute conducted prior to preparation of the original Complaint the named Registrant of the domain name in dispute was Domains by Proxy, Inc. In response to the Request for Registrar Verification the Registrant advised the Center that Domains by Proxy, Inc. the Respondent named in the original Complaint is not the Registrant. The Registrar advised the Center that Evon Smith, of St. Elizabeth Santa Cruz, Jamaica was the Registrant of the domain name in dispute.
Complainant was notified by the Center of the change of Registrant of the domain name in dispute. Complainant sought to verify the information identifying Evon Smith as the current Registrant of the domain name in dispute. Complainant filed an affidavit stating that the phone number provided as the ostensible phone number of the Registrant was one of a series of phone numbers which had never been assigned. An employee of Complainant attested that the address of the new Registrant appears to belong to a Jamaican nursing school and no person has answered the telephone at the phone number of the purported nursing school.
Although Respondent Evon Smith was served with the Amended Complaint by e-mail at the e-mail address provided by the Registrar, Respondent Evon Smith did not respond to Complainant’s allegation that the identity of the true Registrant remains concealed by the true Registrant providing false information to GoDaddy’s Domains -By Proxy service.
4. Factual Background
Complainant is the owner of United States Trademark Registration No.1917518 for the trademark MELALEUCA registered on September 12, 1995 in relation to a variety of healthcare and household products. The trademark was first used in commerce in September 1985. Complainant’s annual gross sales in 2007 were in excess of $850 million US.
Complainant is the owner of United States Trademark Registration No, 1679146 for the trademark MELAPOWER registered on March 17, 1992 for laundry detergents. The trademark was first used in commerce in September 1995.
Complainant is the owner of United States Trademark Registration No. 1684248 for the trademark MELAMAGIC registered on April 28, 1992 for preparations to remove grease, grime, dirt and stains from floors, walls. The trademark was first used in commerce in September 1995.
Complainant is the owner of United States Trademark Registration No. 2066325 on registered June 3 1997 for telephone calling card services and long distance telephone communication services. The trademark was first used in commerce on September 2, 1994.
Respondent registered the domain name in dispute on January 17, 2008.
5. Parties’ Contentions
A. Complainant
A.1 Identical or Confusingly Similar
Complainant is the owner of United States Trademark Registrations for the trademarks MELALEUCA, MELAPOWER, MELAMAGIC, and MELACOM, particulars of which are set out in paragraph 4 immediately above.
Complainant submits that the disputed domain name, , is identical or confusingly similar to Complainant’s registered MELALEUCA mark. The fact that Respondent has used an abbreviation of the MELALEUCA mark has no significance from a likelihood of confusion perspective. The domain name in dispute is confusingly similar to Complainant’s domain name , particularly in light of Complainant’s continuous usage of the formative “mela” as a source identifier for its products and services. The use of a common abbreviation to substitute for part of a trade or service mark does not sufficiently distinguish the resulting domain name from the service mark. See Express Messenger Systems, Inc. v. Golden State Overnight,WIPO Case No. D2001-0063 (finding that is identical or confusingly similar to the complainant’s “California Overnight” service mark). Complainant further submits that Internet users who search the Internet for news regarding melaleuca products or services by using the abbreviated MELA mark in the domain name may be directed to Respondent’s website rather than Complainant’s website, increasing the likelihood of confusion.
Complainant states that it has appropriated and used the MELA mark as a variant of its registered, distinctive and incontestable MELALEUCA mark. It has become a common practice for Complainant to append descriptors, such as the words “power,” “brite,” and “com” to the flagship MELA mark to create source association in the minds of consumers between the products and services so labeled and Complainant. By so doing, Complainant has acquired strong common law trademark rights in the MELA mark.
Complainant states that the disputed domain name, , is confusingly similar to Complainant’s common-law trademark MELA. A complainant has common law trademark rights where the name has become a distinctive identifier associated with complainant or its goods or services. “A fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered.” Uitgerverij Crux v. W. Frederic Isler,WIPO Case No. D2000-0575. Complainant has provided evidence that it has been using the MELA mark in association with its business for more than twenty years prior to the domain name in dispute being registered, and therefore, Complainant submits it has provided adequate grounds for a finding that it holds common law rights in the MELA mark. The fact that Respondent has incorporated Complainant’s common law trademark MELA into the subject domain name, is sufficient evidence that the domain name is identical or confusingly similar to Complainant’s trademarks.
Complainant submits that Respondent’s addition of “newscenter” to Complainant’s MELA trademark does not sufficiently distinguish the resulting domain name from Complainant’s trademark. Merely adding a descriptive addition or generic term to a trademark, such as “news” or “information,” does not sufficiently distinguish the domain name from the trademark. See, e.g., Reuters Limited v. Global net 2000, Inc., WIPO Case No. D2000-0441. Adding the descriptive addition of “newscenter” does not sufficiently distinguish Respondent’s from the MELALEUCA or MELA marks, and the subject domain name is identical or confusingly similar to Complainant’s registered and common law trademarks.
Complainant further submits that a distinct likelihood of confusion exists because the landing page associated with the domain name in dispute claims to include news and information regarding Complainant’s goods and services. This is particularly confusing because Complainant likewise provides a website at “” that features news and information regarding “melaleuca” goods and services. The Complainant’s “” website (Annex No. 6) is an online service with which Complainant has used and is using the MELALEUCA and MELA marks. An innocent visitor to the Respondent’s “www.” website could easily be confused as to the source of the information, believing that he or she was actually on a news site owned by or affiliated with the Complainant, such as “.”
Complainant states that Respondent adds nothing to the domain name in dispute to distinguish its alleged “news” service from the news service already provided by Complainant at “,” and as such, the disputed domain name creates a likelihood of confusion for the consumer. This is particularly true where the domain name wholly incorporates Complainant’s mark. See, e.g., Dreamworks Production Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998). In addition, Respondent’s site clearly and prominently displays Complainant’s registered MELALEUCA mark. Indeed, one’s eyes are automatically drawn to the top left and center of the page where the MELALEUCA mark appears three times in large and bold font, making the mark the first thing a site visitor sees. Moreover, Respondent actually uses the words “MelaleucaNewC” on its page, thereby engendering greater confusion, given that Complainant, as stated, has its own site at the “.”
A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits Respondent should be considered as having no rights or legitimate interests in respect of the domain name in dispute.
Complainant has not licensed or otherwise permitted Respondent to use its trademarks or service marks or to apply for any domain name incorporating any such marks.
Complainant further submits that Respondent is not making a legitimate, non-commercial, or fair use of the domain name without intent for commercial gain, or without intent to misleadingly divert consumers, or without intent to tarnish the trademark or service mark at issue. The content of the current pages associated with the domain name in dispute offers no goods or services for sale. The purpose of the pages associated with the domain name in dispute misleadingly states that it is “designed to bring information from the media to one place.” However, the actual content of the website indicates that Respondent is using the website to voice negative commentary and criticism about the “melaleuca” products and services and to tarnish the trademark at issue. For example, articles found on the Respondent’s website include “Oil Tied to Breast Growth for Boys” by Jeff Donn, Associated Press, The Boston Globe, February 1, 2007 and “Is Vandersloot Getting Rich Quick” by Phyllis Berman, F, October 11, 2004. The Respondent has also included a link to “.” entitled “Personal Melaleuca Stories from Ripoff R”.
Complainant states that while respondents in UDRP proceedings have claimed non-commercial fair use based on the principle of free speech for posting criticism of a complainant, the majority of decisions do not accept free speech as a justification for the use of a domain name containing the complainant’s trademark. For example, in The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A Systems Solutions and Alberto Rodriguez,WIPO Case No. D2002-0823, the panel found: “Respondents can very well achieve their objective of criticism by adopting a domain name that is not identical or substantially similar to Complainant’s mark. Given the free nature of the media which is the Internet and the chaotic spamming that has become epidemic, it does not appear that one can be at full liberty to use someone else’s trade name or trademark by simply claiming the right to exercise a right to freedom of expression.”
Complainant further states that the principle of free speech does not justify Respondent in misleadingly diverting Complainant’s consumers. “[T]he right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views.” GRUPO PICKING PACK, S.A. f/k/a GRUPO HISPANO-SUIZA, S.A. v. Prospero Moran and ASTURNET, S.L.,WIPO Case No. D2000-1220. Where there is nothing in the domain name to indicate that the site is devoted to criticism of complainant, even though this criticism is apparent upon visiting respondent’s website, respondent diverts Internet traffic to its own site, thereby potentially depriving complainant of visits by Internet users. Such use of a trademark name does not permit a respondent to claim legitimate use of the domain name.
Complainant states that Respondent has appropriated the Complainant’s trademarks for the purpose of diverting “melaleuca” consumers to a page voicing criticism of Complainant’s goods, services, and personnel. Because the principle of free speech does not justify misleadingly diverting Complainant’s consumers, Respondent does not present a non-commercial fair use of the domain name.
Complainant further states that Respondent (either as an individual, business, or other organization) has not been commonly known by the domain name. Respondent does not provide the identity of the individual, business or other organization responsible for posting the content on the website. Respondent has further concealed its identity by registering the domain name as “Domain by Proxy, Inc.” which is the name of a service provided to shield the identity of domain name registrants. The Respondent, therefore, has not been commonly known by the disputed domain name and has created no source association in the minds of consumers between the MELALEUCA or MELA marks and Respondent’s business (whatever that may be). Respondent does not use the domain name in connection with a bona fide offering of goods or services. Review of the landing pages associated with the domain name in dispute reveals that Respondent does not offer for sale any goods or services whatsoever.
A.3 Registered and Used in Bad Faith
Complainant states that the facts recited by Complainant relating to Respondent’s absence of rights or legitimate interests in the domain name in dispute amply support the conclusion that Respondent registered and is using the domain name in dispute in bad faith.
Complainant states that Respondent first obtained registration of the domain name in dispute on or about January 17, 2008, more than twelve years after Complainant obtained its MELALEUCA US federal trademark registration and more than twenty years after Complainant first acquired common-law rights in its trademarks through use. Likewise, Respondent first obtained registration of the domain name more than sixteen years after Complainant obtained its MELAPOWER and MELAMAGIC US federal trademark registrations and more than seven years after Complainant obtained its MELACOM US federal service mark registration. Moreover, Respondent obtained registration of the domain name more than sixteen years after Complainant first acquired common law rights in the MELA mark through use.
Respondent thus inappropriately registered, with no legitimate trademark rights and with at least constructive notice of Complainant’s prior trademark rights, the domain name in order to disrupt Complainant’s business by diverting Complainant’s consumers to Respondent’s website.
Complainant states that Respondent has registered the domain name in dispute for the purpose of disrupting the business of Complainant by misleadingly diverting Complainant’s consumers away from Complainant’s own website, and in particular, Complainant’s “” website. See paragraph 4(b)(iii) of the Policy. The standard in paragraph 4(b)(iii) of the Policy focuses on the question of whether it was the intent of Respondent to disrupt the business of Complainant through the registration of the domain name. This standard does not focus on the question of commercial gain by Respondent. GEOCITIES v. GEOCIITES.COM,WIPO Case No. D2000-0326. Paragraph 4(b)(iii) states that an intention to disrupt business is evidence of registration and use in bad faith where the business disrupted is that of a competitor. “However, the examples of bad faith given in the Policy are not exhaustive” and at least one panel has found no reason why an intent to disrupt the business of a non-competitor should not also evidence bad faith. Bett Homes Limited and Bett Brothers PLC v. Bill McFadyen,WIPO Case No. D2001-1018 (October 22, 2001).
Complainant further submits that Respondent’s intention to disrupt Complainant’s business evidences bad faith not only due to the diversion of consumers but also because Respondent intentionally misleads consumers into thinking that the content contained on Respondent’s site is actual news affiliated with and/or supported by Complainant. Consumers are likely to be diverted to Respondent’s website based on Respondent’s illegitimate use of Complainant’s trademarks MELALEUCA and MELA. Respondent plays on the expectations of the consumers who have been diverted to Respondent’s website, as consumers will be expecting to find news and information not only about Complainant’s goods and services but news and information affiliated with and supported by Complainant. Respondent’s criticism of Complainant disguised as legitimate information about and provided by Complainant is evidence of bad faith.
Complainant states that had Respondent merely intended to attract Internet users to a site containing criticism of Complainant, there are several domain name options that Respondent could have used that would not mislead consumers into thinking the criticism was affiliated with or supported by Complainant, particularly in this day and age of search engine optimization. For example, a Google search of the terms “Melaleuca criticism” brings up as the first result the “” website, which, as a computer user would expect, includes criticism of goods and services associated with the MELALEUCA mark. On the other hand, a Google search of the terms “Melaleuca criticism” does not bring up “.” Respondent could have used a domain name that would clearly indicate that the purpose of the site was to provide criticism, such that an Internet user searching for criticism of Complainant or Complainant’s company would be easily led to Respondent’s website using a simple search engine search. Instead, the domain name purposefully misleads Complainant’s consumers for the purpose of providing criticism of Complainant’s goods, services and personnel to unsuspecting “melaleuca” consumers. Respondent has registered the domain name in bad faith, and Complainant’s requested relief should be granted.
Complainant further submits that Respondent’s provision of false phone numbers etc. for the new Respondent shows Respondent’s bad faith obfuscation of true identify and such deception further evidences bad faith.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy Complainant must establish rights in a trademark and secondly that the domain name in dispute is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is registered as the owner of the registered trademarks MELALEUCA, MELAPOWER, MELAMAGIC, and MELACOM registered on the Principal Register in the United States of America in relation to the goods and services described in paragraph 4 above. Complainant’s registered trademark was registered and used for over a dozen years prior to the date of registration of the domain name in dispute on January 17, 2008. Complainant has established use of the formative MELA as the distinctive element of numerous trademarks for over twenty years.
The domain name in dispute, , consists of Complainant’s distinctive formative “mela” in combination with the descriptive term “newsc”. WIPO panels have repeatedly held that the merely adding a descriptive addition or generic term to a trademark, such as “news” or “information,” does not sufficiently distinguish the domain name from the trademark. See, e.g., Reuters Limited v. Global net 2000, Inc., WIPO Case No. D2000-0441.
The addition of “newscenter” to “mela” does not sufficiently distinguish Respondent’s from the MELALEUCA or MELA marks, and the disputed domain name is confusingly similar to Complainant’s registered and common law trademarks.
The Panel finds that Complainant has proven that the domain name in dispute is confusingly similar to the registered and common law trademarks in which Complainant has rights.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain name in dispute.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademarks or any trademarks confusingly similar thereto.
The web pages associated with the domain name in dispute display a series of links to articles which create a negative impression of Complainant, its owners, some of its products and its relations with its distributors. The domain name per se gives no indication that the web pages associated with the domain name in dispute is a criticism site.
The domain name in dispute incorporates as the distinctive element of the domain name the formative “mela” which is confusingly similar to Complainant’s trademark rights in MELA. Does the right to non-commercial criticism extend to permit incorporation of a complainant’s trademark in a domain name? This issue is reviewed in the WIPO Overview of WIPO Panel Views On Selected UDRP Questions at paragraph 2.4. The panel agrees with the view expressed in The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A Systems Solutions and Alberto Rodriguez,WIPO Case No. D2002-0823, where the panel found: “Respondents can very well achieve their objective of criticism by adopting a domain name that is not identical or substantially similar to Complainant’s mark. Given the free nature of the media which is the Internet and the chaotic spamming that has become epidemic, it does not appear that one can be at full liberty to use someone else’s trade name or trademark by simply claiming the right to exercise a right to freedom of expression.”
Pursuant to paragraph 4(c)(iii) of the Policy a respondent can demonstrate rights to and legitimate interests in domain name by proving that it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Although Respondent was invited to file evidence demonstrating that it was making a legitimate noncommercial or fair use of the domain name in dispute it did not do so.
The home pages associated with the domain name in dispute do not disclose the identity of Respondent. The evidence filed by Complainant concerning Respondent Evon Smith discloses that Respondent provided a phone number which has not been allocated by the phone company. Further the address provided by Respondent appears to be the address of a Jamaican nursing school. The preceding and associated facts support an inference that Respondent Evon Smith intends to hide its identity. There is no evidence that Respondent has commonly been known by the domain name.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent has no rights or legitimate interests in respect of the domain name in dispute.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the domain name in dispute has been registered and used in bad faith.
C.1 Domain Name Registered in Bad Faith
Complainant’s registered trademarks featuring the formative MELA some of which have been registered for over twenty years are summarized in paragraph 4 above. Complainant’s trademark MELALEUCA and domain name are prominently displayed on the landing page associated with the domain name in dispute.
The domain name in dispute includes the same descriptive words “news center” found in the domain name , previously owned by Complainant. Complainant attached a copy of the homepage associated with the domain name as an annex to the Amended Complaint. The content of the homepage attached as an annex contained news about the Complainant and its products. A WhoIs search of the domain name shows that that is currently registered in the name of Domains by Proxy, Inc. As matters currently stand the homepage associated with the domain name appears to have the same content as the homepage associated with the domain name in dispute. The content of both homepages contains links to articles creating a negative impression of Complainant, some of its goods and its alleged business practices. The domain name is not in issue in this proceeding beyond the fact that the domain name was relied on as a domain name owned and used by Complainant which appears to be no longer the fact.
The Panel finds on balance that Respondent registered the domain name in dispute in bad faith with knowledge of Complainant’s registered and common law trademark rights.
C.2. Domain Name Used in Bad Faith.
Complainant must prove that the domain name in dispute is being used in bad faith. Paragraph 4(b) of the Policy sets forth a number of circumstances, but without limitation, which if found by the panel to be present shall be evidence of use in bad faith. Paragraph 4(b)(iii) of the Policy reads as follows; “…that you have registered the domain name primarily for the purpose disrupting the business of a competitor;…”.
The second respondent Evon Smith initially concealed his or her identity by registering the domain name in dispute in the name of Domains by Proxy, Inc. Complainant received notice of change of registrant information from the Center advising Complainant that ostensibly correct registrant information had been received from the Registrar concerning the actual identity of the actual registrant. Inquiries conducted by Complainant shows that the name “Evon Smith”, with its distinct spelling is the name of an individual whose conviction for capital murder was recently overturned by the Privy Council. Complainant was unable to locate any Evon Smith in Jamaica. Complainant also found that the phone number provided for Respondent included an area code 419 which had never been assigned. The address provided for Respondent appeared to be a Jamaican nursing school and no person has answered the phone at the purported number of the school.
The home page associated with the domain name in dispute, which domain name is confusingly similar to Complainant’s registered and common law trademarks, contains links to material which are intended to and create a very negative impression of Complainant, its officers, its business practices, and its goods. As Respondent has masked its identity, due to the summary nature of the UDRP procedure it is not possible for Complainant to establish whether Respondent is or is not a competitor. Respondent was given the opportunity to respond to the Amended Complaint and chose not to file a Response. Respondent’s steps in avoiding detection is in the particular circumstances of this case itself evidence of bad faith use of the domain name in dispute. See, The Royal Bank of Scotland Group plc and National Westminister Bank plc A/K/A NatWest Bank v, Alberto Rodriguez / A&A System Solutions, WIPO Case No. D2003-0051, where the panel stated “in the sense that this was probably done in an attempt to avoid detection as long as possible. The panel considers that such changing of contact details and providing untrue information is itself an abuse of the registration process and can be considered as a use of the domain name in bad faith.”.
The Panel finds that Respondent is on balance using the domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to Complainant.
Ross Carson
Sole Panelist
Dated: May 9, 2008
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