The Complainant is Hair Express Ltd. of Tel Aviv, Israel, represented by Kremer & Co. Law Offices, Israel.
The Respondent is Simon Aminov of New York, United States of America, represented by Heidi Gootnick of New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2011. On February 8, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 8, 2011, the Registrar transmitted by email to the Center its verification response. 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 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2011. The Response was filed with the Center on March 7, 2011.
The Center appointed Tony Willoughby as the sole panelist in this matter on March 16, 2011. 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 is the registered proprietor of Israeli trade mark registration number 206699 NANOKERATIN SYSTEM dated December 13, 2007 in class 3 for hair preparations and related products. It is also the registered proprietor of an equivalent figurative Community Trade Mark (registered on September 1, 2009) and a United States trade mark registration in the Supplemental Register (registered April 7, 2009). In respect of this last registration there is a first use claim of November 1, 2008.
On November 1, 2008 the parties entered into an exclusive distribution agreement whereby the Complainant granted to the Respondent the exclusive right to distribute the Complainant’s Nanokeratin System brand of hair care products in the United States.
The Domain Name was registered on November 19, 2008.
On a date, which has not been disclosed to the Panel, the above-mentioned distributorship agreement was terminated.
The Domain Name is connected to a website dealing exclusively with the Complainant’s Nanokeratin System brand and is substantially identical in appearance to the Complainant’s website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its NANOKERATIN SYSTEM trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent denies the Complainant’s allegations, asserting that he registered the Domain Name shortly after the date of the distribution agreement and with a view to promoting and selling the Complainant’s products in the United States and in accordance with the terms of the distributorship agreement.
Notwithstanding termination of the distributorship agreement he still has USD 30,000 – USD 40,000 worth of stock to sell and therefore has a continuing legitimate interest in respect of the Domain Name.
The Respondent makes claims against the Complainant in relation to other domain names, which he claims the Complainant has registered in violation of his rights. However, it is unnecessary for the Panel to address those matters. They have no impact on this dispute. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith. B. Identical or Confusingly Similar
There is no dispute between the parties that the Domain Name is confusingly similar to the Complainant’s NANOKERATIN SYSTEM registered trade mark and the Panel so finds. C. Rights or Legitimate Interests
From section 4 above it will be seen that on November 1, 2008 the Respondent was appointed exclusive distributor for the Complainant’s NANOKERATIN SYSTEM brand of hair care products in the United States.
The distributorship agreement provides that “[t]hroughout the term of this agreement, Distributor shall use its commercially reasonable efforts actively to promote the sale of Supplier’s Nanokeratin Products within the Territory, including reasonable advertising expenditures and attendance at major trade shows.”
Another provision of the distributorship agreement (Clause 8) provides that the Respondent is authorized to use the Complainant’s trade marks for the purposes set out in the agreement, but that the authorization will cease on termination.
The agreement makes no express reference to domain names or websites.
The Respondent contends that his registration and use of the Domain Name was in line with his obligations under the distribution agreement and solely for the purpose of promoting and selling the Complainant’s NANOKERATIN SYSTEM branded products in the United States. While the agreement has now been terminated, the Respondent states that he has USD 30,000 – USD 40,000 worth of stock still to sell and therefore has a continuing legitimate interest in respect of the Domain Name.
The Panel sees force in the Respondent’s contentions in this regard and is not persuaded that the Respondent necessarily has no legitimate interest in respect of the Domain Name.
In any event, in light of the Panel’s finding below regarding the third element of the Policy, it is not necessary for the Panel to address this issue further. D. Registered and Used in Bad Faith
The Complainant’s contention under paragraph 4(a)(iii) of the Policy is very short and reads as follows:
“The Domain Name in dispute was registered and is being used in bad faith. The Domain Name is identical or confusingly similar to the Complainant's common law trade mark. Respondent is aware of Complainant vast use in the mark. Why did the Respondent register the Domain Name which is similar to Complainant trade mark ? !”
The Complainant’s question is an astonishing question in light of the facts and matters set out above. The Complainant appointed the Respondent as its exclusive distributor for the United States on November 1, 2008. The agreement required the Respondent actively to promote the brand and included express authorisation for the Respondent to use the Complainant’s trade mark for that purpose. The Respondent registered the Domain Name 17 days later and connected it to a website which on the evidence produced by the Complainant is substantially identical to that of the Complainant and is wholly devoted to the Complainant’s product.
On the evidence before the Panel, it is plain that the Respondent registered the Domain Name in good faith for the purpose of promoting and selling the Complainant’s products in the United States.
If, as the Respondent contends, he still has substantial stocks of the Complainant’s products to sell, it seems reasonable to the Panel (in the absence of any evidence to the contrary) that the Respondent should wish to continue to use the Domain Name and the website to which it is connected to enable him to divest himself of that stock.
However, whatever may be the true position in relation to the Respondent’s current use of the Domain Name, the Panel is satisfied that when the Respondent registered the Domain Name he did so in good faith. For a complaint to succeed under the Policy a complainant has to demonstrate that the domain name was both registered in bad faith and is being used in bad faith.
The Complainant has failed to persuade the Panel that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Dated: March 20, 2011
Full & Egal Universal Law Academy