The Complainant is Sea of Spa Labs Ltd. of Arad, Israel, represented by Soroker - Agmon, Advocates & Patent Attorneys, Israel.
The Respondent is Edan Vhadat of Encino, California, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2013. On December 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant name for the disputed domain name which differed from the named Respondent in the Complaint. The Center sent an email communication to the Complainant on December 6, 2013 providing the registrant name disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 8, 2013.
The Center verified that the Complaint and 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 amended Complaint, and the proceedings commenced on December 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2014.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 13, 2014. 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 a company incorporated under the laws of Israel (previously known as Belle Mud & Salt Ltd). The Complainant specializes in developing, producing and marketing cosmetics and health products, which contain minerals and salt from the Dead Sea. The “Sea of Spa” products comprise an entire line of cosmetics and beauty care products, including day and night creams, beauty masks, capsules, hand and foot creams.
The Complainant has been manufacturing, marketing and selling for more than 11 years unique cosmetics products under the trademark SEA OF SPA. The Complainant is the owner of the SEA OF SPA trademark which is registered since August 7, 2002 in Israel (Trademark No. 158701), and in the US (US Trademark No. 4,164,893 since June 26, 2012). Complainant has also applied for registration of the trademarks in Thailand (Thai Trademark Applications Nos. 913751, 913752 and 913754 under classes 3 and 35).
The disputed domain name was registered on November 9, 2011. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s trademark SEA OF SPA. The disputed domain name incorporates the Complainant’s trademark in its entirety. In addition, the disputed domain name includes the geographic term “Thailand”.
According to the Complaint, the inclusion of the geographical term “Thailand” in the disputed domain name does not serve to sufficiently distinguish between the Complainant’s trademark and the Respondent. Since the disputed domain name is used to sell cosmetics – apparently cosmetics that resemble to the Complainant’s SEA OF SPA products – in Thailand, the use of the word “Thailand” should not be considered to serve any distinguishing function. The mere addition of the term “Thailand” would lead others to think that the disputed domain name is specific to the Complainant’s activity in Thailand.
The Complainant states that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Complainant has not licensed the Respondent or otherwise authorized or permitted the Respondent to use the SEA OF SPA trademark or to apply to allocate the disputed domain name on its name. In addition, the Respondent is not commonly known by the disputed domain name or by the Complainant’s SEA OF SPA trademark.
With respect to bad faith, the Complainant states that, to the best knowledge of its knowledge, the Respondent is the son of the former distributor of the Complainant’s products in Thailand, Mr. A. Vhadat. According to the Complaint, the correct name of the Respondent may be Edan Vhadat (and not Rhadat, as in the WhoIs records of the Registrar). The Complainant states that on October 18, 2013, the Complainant sent the Respondent’s father, Mr. A. Vhadat and the Paradise Park Co. Ltd., the owner and operator of the Paradise Park mall in Bangkok, Thailand, a cease and desist letter requiring that the SEA OF SPA trademark be removed from the stall that the Respondent’s father was intending to operate within the Paradise Park.
The Complainant states that the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other online location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
The Complainant states that as evidenced by Annex 19 to the Complaint, it is clear that the Respondent uses the disputed domain name to resolve to a web site stating that it is an “authorized online seller” of the Complainant, while it is not. Thus, the Respondent uses the disputed domain name to lead costumers and Internet users to believe that the products sold on his web site originate from the Complainant and are original SEA OF SPA products, while they are not approved by the Complainant. Thus the illicit use of the disputed domain name leads costumers and Internet users to purchase products from the Respondent’s web site instead of the Complainant’s. The use of the Complainant’s trademark and disputed domain name is a clear indication of bad faith registration and use by the Respondent.
The Respondent’s use of the disputed domain name causes harm to the Complainant through leading Internet users to be misled to think that they are arriving to an official web site of the Complainant. Such use is clearly bad faith use of the disputed domain name. The Respondent’s bad faith is also evidenced by the fact that the copyright notice in the web site to which the disputed domain name resolves to states “Sea of Spa © 2011 – All Rights Reserved.” The use of the falsified copyright notice will lead users to believe the web site under the disputed domain name is connected or affiliated with the Complainant.
The Complainant concludes that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant’s SEA OF SPA trademark and products, as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that a complainant must satisfy in order to succeed under the UDRP. The Complainant must satisfy that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established its trademark rights in SEA OF SPA as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark SEA OF SPA. The trademark SEA OF SPA is clearly the dominant element of the domain name. The Panel has had little difficulty in finding that the disputed domain name is confusingly similar to the trademark. The addition of the geographical designation “Thailand” and the generic top-level domain suffix “.com” do not change this finding. These elements are insufficient to distinguish the disputed domain name as referring to an entity other than the Complainant. On the contrary, many Internet users may suppose that the disputed domain name has been registered by the Complainant or by an affiliate of the Complainant to promote its business in Thailand.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the present record of the existence that the Respondent has any rights or legitimate interests with respect to the disputed domain name.
The Complainant has not authorized, licensed, or permitted the Respondent to register or use the domain name or to use the trademark. The Complainant has prior rights in the trademark SEA OF SPA (in particular, Trademark No. 158701) which precede the Respondent’s registration of the disputed domain name by several decades.
The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), section 2.1).
The Respondent has failed to show that the disputed domain name is used in connection with a bona fide offering of goods or services or that it has acquired any other rights or legitimate interests in respect of the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove both that the disputed domain name was registered and is being used in bad faith.
The Complainant’s allegations with regard to the Respondent’s registration and use of the disputed domain name in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent.
In the instant case, the Panel considers that the Respondent must have had knowledge of the Complainant’s rights in the SEA OF SPA trademark when it registered the disputed domain name.
At the time of filing the Complaint, the disputed domain name resolved to a web site offering cosmetic products and stating to be an “authorized online seller” (see Annex 19 of the Complaint). At the time of rendering this decision, the disputed domain name resolves to the web site that contains the following message “This site is currently under construction. Please check back soon!”.
The Complainant has not given any such authorization to the Respondent. No explanation was given on behalf of the Respondent notwithstanding the fact that the content of the web site at the disputed domain name at the time of filing the Complaint was clearly related to the Complainant’s products.
Thus the Panel is of the view that the circumstances of this case indicate that the Respondent must have been aware of the Complainant’s trademark when registering the disputed domain name and that it has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on a web site.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered 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 Complainant.
Pablo A. Palazzi
Sole Panelist
Date: January 27, 2014
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