WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Maharishi Ayur-ved Products International, Inc. v. Kalk Bay Interactive Case No. D2010-0234 1. The Parties
The Complainant is Maharishi Ayur-ved Products International, Inc. of Fairfield, Iowa, United States of America, represented by Shuttleworth & Ingersoll PLC, United States of America (“US”).
The Respondent is Kalk Bay Interactive of Muizenberg, Cape Province, South Africa. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2010. On February 17, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On February 17, 2010, Tucows Inc. transmitted by email to the Center its verification response confirming that:
(a) the disputed domain name is registered with it;
(b) the Respondent is listed as the current registrant;
(c) the contact details for the Respondent provided in the Complaint are correct; and
(d) the language of the registration agreement is English.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2010. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on March 22, 2010.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 8, 2010. 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 owns US Registered Trademark No. 2,636,015, AMRIT, in respect of herbal dietary supplements in international class 5.
The US trademark was registered claiming a first use in commerce in the US in October 1999.
The Complaint states that the Complainant has been using its trademark continuously since that date and claims to have invested a substantial amount in advertising and promotion of its mark. The only evidence of this included in the Complaint are some print outs from the Complainant's website showing, amongst other things, images of the Complainant's product bearing its trademark. The Complainant's AMRIT range of products is one range of a number offered under various trademarks, including the Complainant's MAHARISHI AYURVEDA trademark.
It would appear from the WhoIs record that the Respondent registered the disputed domain name on March 18, 2004.
At the time of the dispute, the disputed domain name resolved to a website from which the Respondent was apparently offering for sale, and selling, genuine products of the Complainant. These products, however, were products marketed in India and marked “for sale in India only”. Some of the products displayed for sale on the Respondent's website, while apparently the Complainant's Maharishi Ayurveda products, are not AMRIT branded products.
The Respondent's website is in English. It appears plain that the Respondent is soliciting custom from throughout the world. For example, the ‘Shipping information” page states:
“For countries outside of Europe/USA, it may take a little longer for your parcel to arrive. We can ship to any country that has a post office.”
The website also displays a rotating sequence of what are apparently glowing endorsements from satisfied customers. At least some of them are described as originating from the “USA”. 5. Discussion and Findings
While there has not been a formal Response, the Complaint has been sent to the address co-ordinates which the Registrar has confirmed are current for the Respondent. Clause 20 of the Registration Agreement imposes on the Respondent a duty to maintain correct and up to date WhoIs details. Accordingly, the Panel finds that the Respondent has been properly served and given a fair opportunity to put on its case.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(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 interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel addresses each in turn. A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights in a mark and, if so, is the disputed domain name identical or confusingly similar to that mark?
The evidence submitted with the Complaint clearly establishes that the Complainant has registered trademark rights in US Trademark No. 2,636,015 referred to above.
The second part of this inquiry requires a comparison between the proved trademark rights and the disputed domain name. On this part of the inquiry what is required is simply a comparison and assessment of the domain name itself with regard to the Complainant's proved trademarks. See for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420.
It is well established that the gTLD “.com”, being a functional requirement of the domain name system, can be disregarded for the purposes of this inquiry. See for example Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet Inc.,WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493.
On this approach, the disputed domain name is confusingly similar to the Complainant's proved trademark rights. The distinctive element of the domain name is the word “amrit” which encompasses the whole of the Complainant's trademark. The addition of the descriptive term, “direct”, does nothing to dispel any risk of confusion as it likely to be taken by many Internet users as simply indicating an online source for products from the owner of the AMRIT trademark, probably from the manufacturer or supplier itself.
Accordingly, this requirement is satisfied. B. Rights or Legitimate Interests
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. In view of the difficulty in proving a negative, the Complainant must adduce sufficient material to establish a prima facie case under this factor and then the evidential burden shifts to the Respondent to rebut that prima facie case. For convenience the Panel refers only to paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
“(i) before any notice to you of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
These are examples only and not an exhaustive enumeration of the ways in which rights or legitimate interests can be shown. They do provide, however, a guide to what is contemplated as permissible under the Policy.
The Complainant states that there is no connection between it and the Respondent; in particular, it has not licensed the Respondent to use the Complainant's trademark. The Complainant also points out that the domain name is not derived from the Respondent's name as shown in the WhoIs records.
Next, the Complainant points out that the Respondent is selling “gray market goods”, sometimes known as parallel imports. According to the Complainant, the Respondent is selling genuine products of the Complainant made for and sold in the Indian market. The Complainant quite frankly states that these goods “do not meet the stringent regulatory demands of the U.S. and European markets.” They are sold marked “for sale in India only”. The Complainant alleges that the Respondent has set up the website solely to sell the cheaper Indian market products to U.S. and European customers. The Complainant characterises such conduct as “purely for an illegal purpose”. In support of this characterisation, the Complainant invokes Raymond Weil SA v. Watchesplanet (M) Sdn Bhd,WIPO Case No. D2001-0601.
By not filing a Response, the Respondent has not challenged the factual assertions alleged by the Complainant and, in accordance with prior UDRP panel practice, the Panel can proceed on the basis that such assertions, where reasonable, are accurate. It does appear from the Respondent's website that the products offered for sale are sourced from India. It is also clear from the website that the intended market is worldwide and specific reference is made to both the European Union (“EU”) and the US.
As in this case, the Raymond Weil SA v. Watchesplanet decision, supra, did not involve a written Response.
The Complainant characterizes the Respondent's conduct as illegal, but that is not necessarily the case throughout the world. Neither party has favoured the Panel with specific submissions on the matter. However, the Panel is aware that EU law has adopted a rule of intra-EEA exhaustion but that does not extend to goods first marketed outside the EEA1 and there are a number of Circuit Court decisions in the USA2 which also permit trademark owners to block parallel imports.
The Panel also notes that there is a division of views among panels about the extent to which a reseller may legitimately register as a domain name and use a manufacturer's trademark.3 On the majority view, derived from Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, such conduct is permissible but it appears that the Respondent would not satisfy those criteria in this case having regard to the sale of non-AMRIT brand products from the website, the failure to make the relationship with the trademark owner clear and the allegation of inferior quality.
In these circumstances, and bearing in mind all of the above, the Panel concludes that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:
“(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), 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:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
As the terms of the paragraph make clear, these are examples only and not an exhaustive enumeration of the circumstances in which registration and use in bad faith are found.
The central charge here is that the Respondent registered the disputed domain name to offer to sell, and has in fact sold, gray market goods to consumers in the US and the EU in infringement of the Complainant's trademark rights. The Respondent has not sought to rebut that charge and the Panel has found that the Respondent does not have rights or a legitimate interest in the disputed domain name.
Taking advantage of a trademark to sell goods which infringe the Complainant's trademark is not “good faith” conduct for the purposes of the Policy. Accordingly, it must follow that the Respondent has been shown to have registered the disputed domain name in bad faith and is using it 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 the Complainant.
Warwick A. Rothnie
Sole Panelist
Dated: April 19, 2010
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