The Complainant is S.O.R. Internacional S.A. of Barcelona, Spain, represented by ID Law Partners, Spain.
The Respondent is Bellissima Inc., of Manchester, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (“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 June 29, 2010. On June 29, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Disputed Domain Name. On June 29, 2010, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2010.
The Center appointed Alistair Payne as the sole panelist in this matter on July 29, 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 produces and distributes machines for facial and body enhancement and beauty treatments in Spain and in various countries throughout the world and has done so for many years. It owns various trade mark registrations worldwide for the SORISA word mark and several variations of this word mark as well as a combined word and device mark featuring the word SORISA. It also operates a website for its products at the domain name which it registered in March 2005. 5. Parties’ Contentions A. Complainant
The Complainant submits that apart from its numerous trade mark registrations that it has made a very substantial use over many years of its SORISA mark through numerous countries in the world and that the mark is so well known as to be a famous mark. It submits that the Disputed Domain Name incorporates its SORISA mark as a whole but is preceded by the suffix “spa”. The Complainant submits that the Disputed Domain Name is confusingly similar to its mark. It says that the addition of this suffix does not render the Disputed Domain Name distinctive and in fact only serves to reinforce potential confusion with its trade mark as the prefix “spa” is descriptive of and is commonly used to describe beauty treatments.
As to rights or legitimate interests the Complainant says that the Respondent was one of its independent distributors until 2008 when its distribution agreement was terminated for cause due by the Complainant due to the Respondent’s liquidation. The Complainant submits that under this agreement the Respondent was not entitled to make unauthorized use or to infringe its trade marks or to register any confusingly similar marks. Further the Respondent’s right to use the Complainant’s mark came to an end upon termination of the agreement.
The Complainant says that in spite of this agreement the Respondent registered in 2005 and is still using the Disputed Domain Name containing the SORISA mark (together with other domain names which are not the subject of this Complaint) after termination of the distribution agreement. In particular the Respondent maintains a link to its website at the Disputed Domain Name from one of its other beauty product websites and as a result people are likely to be confused or the Complainant’s marks and goodwill diluted or tarnished. As a consequence the Complainant says that the Respondent has no right or legitimate interest in using the SORISA mark in the Disputed Domain Name.
The Complainant submits that the Respondent registered the Disputed Domain Name in bad faith because having been one of the Complainant’s distributors it knew of the Complainant’s trade mark rights at the time of registration. Subsequently it continued to use the Disputed Domain Name even after termination of the distribution agreement and in these circumstances this amounted to use in bad faith. Further the Respondent had no right under the distribution agreement to use the Complainants trade mark rights but continued to do so after termination and in competition to the Complainant. The use of the Disputed Domain Name containing the Complainant’s trade mark and the prefix “spa” in competition with the Complainant only serves to confuse consumers according to the Complainant and fulfills the evidential requirements for bad faith under paragraph 4 (b) (iv) of the Policy. Further indicative of bad faith according to the Complainant is the Respondent’s failure to comply with the registration policy, its failure to respond to its cease and desist letter and subsequent deactivation of the Disputed Domain Name following receipt of the cease and desist letter. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has provided evidence that it has registered trade mark rights in its SORISA trademark. The Disputed Domain Name differs from this trade mark only in that it incorporates the prefix “spa”. Although not therefore identical to the Complainant’s SORISA trade mark, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s registered trade mark. This is because the Disputed Domain Name incorporates the Respondent’s trade mark in its entirety which numerous panels have found to resulting confusing similarity despite the addition of other words to such marks. E.g., EAuto, L.L.C. v. EAuto Parts,WIPO Case No. D2000-0096 (WIPO April 9, 2000) (“parts” added to mark EAUTO in ); Caterpillar Inc. v Off Road Equipment Parts, FA0095497 (NAF October 10, 2000) (“parts” added to mark CAT in ); Komatsu Ltd. v. RKWeb Ltd.,WIPO Case No. D2000-0995 (WIPO November 13, 2000) (“parts” added to mark KOMATSU in ).
Furthermore, in the Panel’s view the prefix “spa”, which is descriptive of beauty treatment services, does not distinguish the Disputed Domain Name from the Complainant’s trade mark in the context of competing beauty products. Considering the very considerable renown attaching to the Complainant’s SORISA trade mark, the use of the prefix “spa” is in the Panel’s view only likely to confuse people into thinking that the Disputed Domain Name is associated somehow with the Complainant.
Accordingly, the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
The Panel notes that the Respondent was originally a distributor of the Complainant’s products under the terms of a formal distribution agreement. Although this agreement prohibited the Respondent from making any unauthorized use of the Complainant’s trade marks, from infringing its trade marks, or from registering any confusingly similar marks, the Respondent nevertheless registered the Disputed Domain Name in 2005. It is not clear to the Panel whether the Complainant knew of this registration or not during this period, but in any event, it is clear that the Complainant did not authorize such registration and in spite of the Agreement’s prohibition on use after its termination, the Complainant continued to use the Disputed Domain Name after termination in 2008 and without the Complainant’s authorization. In addition it appears from review of the Complainant’s cease and desist letter and materials submitted in evidence that the Respondent’s website at the Disputed Domain Name included various copyright works copied from the Complainant’s site also without authorization. The Panel finds that the Respondent has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
In the absence of any response, the Panel can only infer that this is not a case of bona fide use by an authorised dealer or reseller of the type which fits within the principles set out in Oki Data Americas, Inc v ASD, Inc., WIPO Case No. D2001-0903 (WIPO November 6, 2001). To the contrary, it appears that the Respondent knew of the Complainant’s trade mark rights as a consequence of its distributorship and of the renown of the Complainant’s trade mark and after termination was blatantly attempting to use the Disputed Domain Name for the purpose of selling beauty products or services. This is not consistent with a legitimate usage of the Disputed Domain Name and there is no other evidence or circumstance before the Panel which supports a claim to legitimate interests or rights in the Disputed Domain Name and which would rebut the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
As a result the Panel finds that the Complaint succeeds in relation to the second element of the policy. C. Registered and Used in Bad Faith
It is clear to the Panel as noted above that the Respondent was well aware of the Complainant’s trade mark rights in SORISA and that it registered the Disputed Domain Name while it was a distributor of the Complainant’s products but without the Complainant’s authorization.
It also appears to the Panel that the Respondent did intentionally register the Disputed Domain Name with a view to trading of the goodwill attaching to the Complainant’s SORISA mark by attracting confused Internet users to its website in order for commercial gain, in accordance with paragraph 4 (b)(iv) of the Policy. Based on the evidence before the Panel there is not other reasonable explanation for the Respondent’s registration of the Disputed Domain Name and subsequent use after termination of the distribution arrangement in relation to a website featuring unauthorized copies of materials from the Complainant’s website and with the apparent intention to sell beauty products or services to Internet users.
The Respondent’s conduct in de-activating the website upon receiving a cease and desist letter from the Complainant’s representatives is only consistent with the view that the Panel has taken.
Under the Policy a finding under paragraph 4 (b)(iv) is evidence of the registration and use of a domain name in bad faith and accordingly the Panel finds that the Complaint succeeds under the third element of the Policy. 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.
Alistair Payne
Sole Panelist
Dated: August 12, 2010
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