WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION SpaRitual, LLC v. Vivienne O'Keeffe Case No. D2009-0066 1. The Parties
The Complainant is SpaRitual, LLC, of Los Angeles, California, United States of America (“USA”), represented by Shlesinger, Arkwright & Garvey, LLP, of the USA.
The Respondent is Vivienne O'Keeffe of Calgary, Canada, represented by Stikeman Elliott, of Canada. 2. The Domain Name and Registrar
The disputed domain name the (the “Domain Name”) is registered with DomainPeople, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on January 16, 2009, and in hard copy on January 20, 2009.
The Center transmitted its request for registrar verification to the Registrar by email on January 20, 2009. The Registrar responded on January 27, 2009, confirming that it was the registrar and the Respondent was the registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name, that the Domain Name would expire on October 19, 2011, and had been placed on registrar lock, and that the registration agreement was in English. The Registrar also stated that it had not received a copy of the Complaint, provided the full contact details in respect of the Domain Name held on its Whois database and did not dispute that the Respondent had submitted in the registration agreement to the jurisdiction of the courts where the Registrar was located.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 28, 2009. By email of February 11, 2009, the Complainant informed the Center that the copy of the Complaint which it had sent to the Respondent had been returned by the courier as undeliverable and that the Respondent had confirmed that it had received the Complaint from the Center and did not require the copy sent by the Complainant to be re-served.
In accordance with paragraph 5(a) of the Rules, the due date for Response was February 17, 2009. The Response was filed with the Center on February 17, 2009.
The Center appointed Jonathan Turner as the sole panelist in this matter on February 24, 2009. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant carries on a business based in Los Angeles, USA, supplying nail and body care products under the mark SPARITUAL. The Complainant has registered this mark in respect of these products in various countries, including the USA and Mexico, and has pending applications to register the mark in other countries, including Canada.
The Respondent is a consultant to a business which operates a spa under the name “The Spa Ritual” in Calgary, Canada. The Domain Name was registered by the Respondent on behalf of the business on October 19, 2006, and is pointed to a website promoting the spa and its facilities. These facilities include a boutique selling body care products and the website also says “Check back soon for online shopping of our exclusive Spa Ritual products”. 5. Parties' Contentions A. Complainant
The Complainant contends that it has registered and unregistered rights in the mark SPARITUAL and that the Domain Name is confusingly similar to this mark. The Complainant points out that the Domain Name differs from its mark only by the addition of the definite article, which is inherently non-distinctive. The Complainant adds that actual confusion has occurred in that it was sent a bill intended for the business using the Domain Name.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It states that the Respondent registered the Domain Name subsequent to its use of its mark in the USA (commencing in or before June 2004) and Canada (commencing in or before February 2005), as well as its registration of the mark in the USA (application filed in August 2003) and other countries. It considers that the Respondent was on constructive notice of a dispute with the Complainant prior to any use or preparations to use the Domain Name in connection with a bona fide offering of goods or services.
The Complainant also says that it has not licensed the Respondent's use of its mark, that the Respondent is not commonly known by the Domain Name and that the Respondent is not making non-commercial or fair use of the Domain Name.
The Complainant alleges that the Respondent registered and is using the Domain Name in bad faith. According to the Complainant, the Respondent is intentionally using the Domain Name to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website and products promoted on it.
The Complainant requests a decision that the Domain Name be transferred to it. B. Respondent
The Respondent states that she has been retained since 2005 as a consultant to a project to establish, develop, own and operate a full-service day spa in Calgary, Canada. She prepared a site assessment report in June 2005 and a strategic development plan in July 2006.
The business retained the services of a design firm which made a proposal regarding branding and a logo in August 2006 and registered the domain name on August 9, 2006. However, at a meeting on October 19, 2006, it was decided that the Domain Name was preferable. The Respondent registered the Domain Name the same day, listing A Spa Ritual Corp (one of the companies developing the project) as administrative contact.
The Respondent prepared a “Concept Document” including a proposed layout and design for the spa in October 2006. This document used the name “The Spa Ritual” for the venture. A Spa Ritual Corp applied to register a logo incorporating the words “the spa Ritual” as a trademark in Canada on May 31, 2007.
A website promoting the forthcoming spa went live at the Domain Name in December 2007. The spa opened to the public in September 2008.
The Respondent draws attention to the differences in location and nature of the respective businesses of the parties and submits that there is not and should not be any relevant confusion between the Domain Name and the Complainant's mark.
The Respondent further submits that the Respondent has rights or legitimate interests in the Domain Name since she made preparations to use and did use the Domain Name in connection with a bona fide offering of goods or services before notice of any dispute and since her business is commonly known by the Domain Name. She states that the first notice she had of any allegation of a potential dispute was a letter from the Complainant's Counsel to her Counsel of April 21, 2008, following the Complainant's opposition to the trademark application made by A Spa Ritual Corp.
The Respondent notes that the Complainant has not provided evidence of its alleged sales or other use of its mark in Canada. The Respondent denies any knowledge of such sales.
The Respondent also denies that she has acted in bad faith or has any intention of using the Domain Name to create confusion with the Complainant's mark. She states that the dispute is properly characterized as a trademark dispute which should be determined by the courts. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. The three requirements are cumulative. A. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant has registered and unregistered rights in the mark SPARITUAL.
The Panel further finds that the Domain Name is confusingly similar to this mark, from which it differs only in the addition of the definite article and the generic top level domain name suffix. The Panel considers that Internet users familiar with the Complainant's products are liable to assume that the Domain Name indicates a website of the Complainant.
The first requirement of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel finds on the evidence that the Respondent made demonstrable preparations to use the Domain Name and the corresponding name “The Spa Ritual” in connection with a bona fide offering of services before any notice to her of a dispute.
Although the Complainant asserts that it has made sales in Canada since at least February 2005, there is no evidence of the extent of these sales and therefore no basis to infer that the Respondent must have been aware of them at any particular point in time.
In the Panel's view an application to register a trademark in the USA or other countries does not of itself constitute notice of a dispute to a party in Canada for the purposes of paragraph 4(c)(i) of the Policy. The Panel considers that the doctrine of constructive notice under US trademark law does not assist in cases under the UDRP where the respondent is outside the USA: see Sales Jobs, Inc. v. JobA Inc.,WIPO Case No. D2007-0906.
The Panel does not find any evidence in the file which undermines the Respondent's evidence that she was not aware of the Complainant's use of the mark SPARITUAL when her business made preparations to use the Domain Name and the corresponding trading name “The Spa Ritual” for its spa services.
In accordance with paragraph 4(c)(i) of the UDRP, these circumstances demonstrate the Respondent's rights or legitimate interests in the Domain Name for the purposes of the UDRP.
The second requirement of the Policy is not satisfied. The Complaint must therefore be rejected. C. Registered and Used in Bad Faith
In view of the above finding it is not necessary to consider the third requirement of the UDRP. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Jonathan Turner
Sole Panelist
Dated: February 27, 2009
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