The Complainants are Marico Limited / Kaya Limited of Mumbai, India represented by Lall Lahiri & Salhotra, Advocates Patent and Trademark Attorneys, India.
The Respondent is Kayaspandan, Sameer Sharma of Indore, India / Whois Privacy Protection Service Inc. of Washington, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2013. On June 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on June 14, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on June 18, 2013.
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” 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 June 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2013.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on July 17, 2013. 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 First Complainant, Marico Limited is an Indian company incorporated in 1988 initially under the name of Marico Foods. The Second Complainant Kaya Limited is a wholly owned subsidiary of the first Complainant and was incorporated on March 2003 initially under the name Kaya Beauty Services Limited. The First Complainant is a manufacturer and merchant of consumer products and the second Complainant is a provider of skin care products and services. The Complainants market products and services under the KAYA mark and its variants in India and in other countries. The Complainants are registered proprietors of several KAYA formative marks. The First Complainant is the owner of the registered trademarks:
Trademark Registration Number Class
Date
MARICO’S KAYA
1163156
05
December 31, 2002
KAYA SKIN CLINIC
1142838
05
October 11, 2002
KAYA
1141158
10
October 4, 2002
KAYA SKIN CLINIC
1142998
10
October 14, 2002
The Second Complainant owns the registered trademarks:
Trademark RegistrationNumber Class
Date
KAYA GLOW
1196872
03
May 6, 2003
KAYA SILKY LEGS NITE
11349327
42
May 6, 2005
KAYA SKIN TALK
11375462
41
August 4, 2005
KAYA BACKLESS NIGHT
11349326
41
April 6, 2005
The disputed domain name was registered on April 25, 2009.
The Complainants filed an infringement suit C.S. (O.S) No. 83 of 2010 before the Delhi High Court against Seven Star Wellness Limited for a perpetual order of injunction restraining the defendants in that suit from using the KAYA mark or any similar mark. The suit was settled between the parties and the Delhi High Court passed a decree in terms of the settlement on July 26, 2011.
As per the terms of the settlement, Seven Star Wellness Private Limited either by themselves, by their partners, officers, employees, dealers, successors-in title, sister concern(s), associates, subsidiaries, franchisees, licensees or any other person claiming under them shall refrain from using the mark KAYA SPANDAN. It was further agreed under the settlement that Seven Star Wellness Private Limited was not allowed to use the KAYA mark or any deceptively similar mark. 5. Parties’ Contentions A. Complainants
In October 2012 the Complainants state they came across the disputed domain name and found the web pages linked to the disputed domain name were being used by Seven Star Wellness Limited. The Complainants state that Seven Star Wellness Limited was bound by the High Court decree of July 26, 2011 and a letter was sent on October 8, 2012 to the defendants in the suit requesting them to comply with the court decree, to which there was no response. The Complainants have provided as evidence screen shots of the website linked to the disputed domain name that features services offered by Seven Star Wellness Limited. Under these circumstances, the Complainants assert that the Respondent is none other than Seven Star Wellness Limited or has transferred the disputed domain name to the Respondent, to avoid complying with the court decree.
The First Complainant states it has a wide distribution network that covers every Indian town with a population of over twenty thousand and owns the well-known trademarks, PARACHUTE, SAFFOLA, NIHAR, SWEEKAR, MEDICARE, REVIVE, KAYA, KAYA SKIN CLINIC and KAYA LIFE. The trademark KAYA was first adopted and promoted by the First Complainant in relation to skin products and services in 2002, and it has trademark registrations for the mark under classes 5 and 10. The word “kaya” is an essential part of the corporate name and style of the Second Complainant. Its skin clinics operate under the trademark KAYA SKIN CLINC and its trademark KAYA has been extensively used in relation to its hair care, skin care and beauty care products. The Second Complainant claims it has a clientele of over 9,37,407 customers, 83 clinics and 18 clinics in the Middle East.
The Complainants have filed copies of their trademark registration certificates and a list of their trademark application details in other countries. The mark, according to the Complainants, has been held to be a super brand by the United Arab Emirates Super Brand Council. The Complainants have filed copies of advertisements and invoices for publication of its advertisements. A consolidated statement of its year wise all-India sales figures under the brand name KAYA and KAYA SKIN CLINICS from 2003 to 2013 certified by a Chartered Accountant has been filed. The Complainants state that they run a website at the domain name for its online customers.
The Complainants base the Complaint on the grounds that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which they have rights. The Complainants assert that their KAYA mark and their domain name have been adopted and used by them since 2002 and it has become distinctive of its goods and services. The inclusion of the word “spandan” is not sufficient to distinguish the disputed domain name from their well-known KAYA mark argue the Complainants. The Respondent ought to have known of the well-known mark and registered the disputed domain name to create confusion in the minds of the public as it promotes services in the same area of business as that of the Complainants.
The Complainants argue that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent has no business relationship with the Complainants. The Complainants are prior users and registered trademarks owners of the mark and the disputed domain name was registered more than seven years after the Complainants adopted and established its mark in the skin care market. As the Complainants’ corporate name also includes the word “kaya”, people may mistakenly believe the Complainants are endorsing the disputed domain name. The very choice of the disputed domain name is to create a false association with the Complainants and to exploit the good will associated with their KAYA mark argues the Complainants.
The disputed domain name was registered and is being used in bad faith allege the Complainants as the Respondent offers services competing with the Complainants, but has no right or legitimate interest to use a deceptively similar name to its mark. Such use of the disputed domain name is to derive benefit from the goodwill associated with the mark and to disrupt the business of the Complainants by promoting identical products and services to confuse users. The Complainants therefore requests for transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainants’ contentions. The only communication received from the Respondent is an email dated July 10, 2013 addressed to the Center stating “I do not know why you are sending these mails to me.” and the Center’s reply to that mail stating that the communications were being sent to it as it is the named Respondent in the case. 6. Discussion and Findings
Paragraph 4 (a) of the Policy stipulates that the Complainants must prove each of these three elements in order to succeed in these proceedings:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights: and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first requirement of paragraph 4 (a) of the Policy require the Complainants to establish that the disputed domain name is identical or confusingly similar to a trademark in which they have rights.
The Complainants have provided evidence of their registered rights in the KAYA mark in India and other countries. The Complainants’ prior adoption and use of the mark has been established from the trademark registration documents that show the priority date of filing is in the year 2002. Trademark registration is considered prima facie evidence of rights in the mark. The Complainants have also provided evidence of its advisements, yearly sales figures and promotion figures under the said mark certified by a Chartered Accountant, thereby establishing its common law rights in the KAYA mark. Based on all the evidence, the Complainants are found to have clearly established their rights in the trademark KAYA in these proceedings.
The disputed domain name consists of the trademark KAYA and the term “spandan”. It is the contention of the Complainants that the disputed domain name is confusingly similar to the mark despite addition of the term “spandan”. A domain name that entirely incorporates a mark along with another term is generally found to be confusingly similar to the well-known mark. See for instance F.Hoffmann-LaRoche AG v. Direct Privacy ID 9CC6, WIPO Case No. D2010-0139, where the domain name was found confusingly similar to the trademark TAMIFLU.
The disputed domain name in the present case incorporates the Complainants’ mark in its entirety with another term and is accordingly found confusingly similar to the KAYA mark in which the Complainants have rights. The Complainants have successfully established the first element under paragraph 4 (a) of the Policy. B. Rights or Legitimate Interests
The second element under paragraph 4 (a) of the Policy requires the Complainants to make a case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainants have to merely put forward a prima facie case that the Respondent lacks rights or legitimate interests and the onus of proving rights or legitimate interests in the disputed domain name lies with the Respondent.
The Complainants have argued that the Respondent is not authorized to use its mark and has no business connection with the Complainants and therefore lacks rights or legitimate interests in the disputed domain name. It has been established in these proceedings that the Complainants have widely used, advertised and promoted the KAYA mark for a period of seven years prior to the registration of the disputed domain name. The Respondent, who is not connected with the Complainants or its business, nonetheless has made unauthorized use the Complainants’ trademark in the disputed domain name.
The Respondent has not participated in these proceedings or filed any response to the Complaint claiming rights or legitimate interests in the disputed domain name. Given these circumstances, it is the Panel’s view, the use of the Complainants’ trademark in the disputed domain name is likely to mislead the public and Internet users that the disputed domain name is some how connected to the Complainants. A domain name that gives a false impression to users does not confer rights or legitimate interests to the Respondent. This view has been upheld in several decisions. See for instance Pfizer Inc. v. Schreiner / Schreiner & Co.,WIPO Case No. D2004-0731.
The Complainants have accordingly satisfied the second requirement of paragraph 4 (a) of the Policy, and has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The third element under paragraph 4 (a) of the Policy requires the Complainants to establish that the disputed domain name was registered in bad faith and is being used in bad faith.
The Complainants have argued that the disputed domain name was registered in bad faith and is being used in bad faith as the Respondent offers services competing with the Complainants’ area of business with no rights or legitimate interests to use a confusingly similar name to its mark. The Complainants have further argued that the Respondent has intentionally included the KAYA mark in the disputed domain name to exploit the fame and goodwill associated with the mark and such imitation of its mark would lead to disruption of its business.
The Panel accepts the Complainants’ contentions of bad faith registration of the disputed domain name for the following reasons: First, it has been clearly established in these proceedings that the Complainants are manufacturers and merchants of consumer products and skin care products. Second, the Complainants have adopted the KAYA mark since 2002 and have widely used and popularized the mark in India and several other countries in relation with their skin and beauty care business for a period of seven years prior to registration of the disputed domain name. Third, given this background, and considering the evidence and circumstances of the case, it will be reasonable to infer that the disputed domain name was registered with the intention of creating a likelihood of confusion among consumers who may mistakenly believe the disputed domain name is affiliated with the Complainants as the KAYA mark that has come to be associated with the products and services of the Complainants.
As far as bad faith use of the disputed domain name is concerned, the Panel notes that even though the disputed domain name is registered in the name of the Respondent, it is however being used for promoting services of Seven Star Wellness Limited in a similar area of business as that of the Complainants. This gives rise to the inference that the Respondent ought to have been aware of the Complainants’ mark and probably registered the disputed domain name to obtain some benefit from use of the KAYA mark. Under the Policy, this is considered bad faith registration and use of the disputed domain name.
The Panel finds the Respondent’s website is promoting competitors of the Complainants in the beauty products business by using the Complainants’ mark. The screen shots of the Respondent’s websites filed as evidence show the disputed domain name is being used to offer services of Seven Star Wellness Limited. As mentioned by the Complainants, Seven Star Wellness Limited, is expressly bound by a settlement agreement and by a court decree to refrain from using KAYA SPANDAN and the Complainants’ KAYA mark or its variants for promoting its business. On the basis of the evidence on record and considering the circumstances of the case, the Panel finds the Complainants have put forward sufficient evidence of bad faith use of the disputed domain name.
Paragraph 4(b)(iv) of the Policy makes reference to circumstances indicating bad faith registration and use of the domain name, if the registration and use is made with an intention to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location. The Panel is of the view that the use of the trademark KAYA by the Respondent in the disputed domain name is with the intention of creating a likelihood of confusion with the Complainants’ KAYA mark and to attract Internet users to the Respondent’s website for purposes of deriving some mileage from the goodwill associated with the mark. For the reasons discussed, the Panel finds that the disputed domain name has been registered in bad faith and is being used in bad faith as envisaged under paragraph 4(b)(iv) of the Policy.
The Complainants have accordingly satisfied the third requirement of paragraph 4(a) of the Policy that the Respondent has registered the disputed domain name in bad faith and is using the disputed domain name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainants.
Harini Narayanswamy
Sole Panelist
Date: July 31, 2013
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