The Complainant is Dead Sea Premier Cosmetics Laboratories Ltd. of Lod, Israel, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America (the “USA”).
The Respondent is Maysan Jeuness GmbH / Gal Yana of Berlin, Germany, represented by Lemme + Al Abed Rechtsanwälte, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH dba (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2013. On December 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The concerned Registrar informed the Center that the language of the registration agreement for the disputed domain name is German. On December 10, 2013, the Center sent an email to the parties and requested the Complainant to provide at least one of the following: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into German; or 3) submit a request for English to be the language of the administrative proceedings. On December 11, 2013 the Complainant submitted a request for English to be the language of the administrative proceedings. On December 11 and 12, 2013, the Respondent submitted a request for German to be the language of the administrative proceedings. The Center proceeded in German and in English with the administration of the proceedings.
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 December 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2014. The Response was filed with the Center on January 6, 2014.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on January 16, 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.
On the same day the Panel was appointed, the Complainant submitted a Request to terminate the proceedings pursuant to the Rules, paragraph 17 (b), based upon the fact that “the Complainant wishes to withdraw its Complaint prior to a decision”, alternatively to be granted the right to file a Supplemental Filing should such request be denied.
Following Administrative Panel Order No. 1, the Respondent objected on January 23, 2014 to have the proceedings terminated and requested a decision to be rendered.
On January 27, 2014, the Complainant submitted to the Center a Declaration from the Complainant’s counsel, signed on January 24, 2014, informing the Center that he had been unaware as of the time of the filing that the parties had entered into a distribution agreement (see below section 4) and that, as a result, the Complainant had to be considered as withdrawn.
On February 5, 2014, the Center informed the parties that, pursuant to the Rules, paragraph 10(c), due to exceptional circumstances, the Decision due date had been extended until February 13, 2014.
On the same day, the Complainant reiterated its request to file a Supplemental Filing should the Panel decide to nevertheless render a decision in this case. 4. Factual Background
The Complainant is the owner of US trademark registration No. 4173366 for PREMIER BY DEAD SEA PREMIER, filed on February 10, 2010, and a first use in commerce of January 1, 1999.
As mentioned in the Response, on June 15, 2009, the Parties entered into a distribution agreement, according to which the Respondent, as an exclusive retailer of the Complainant’s products in Germany, was authorized to use the Complainant’s trademark.
According to the Parties, the Respondent registered the disputed domain name on November 3, 2011. The website at the disputed domain name prominently displays the Complainant’s trademark together with the indication that the Respondent is a certified authorized dealer.
On April 12, 2013, Mr. […] Yuval, Chief Operating Officer of the Complainant, signed an affidavit according to which he asserted that “[…] 3. The registrant of the Disputed Domain Name is not authorized by Dead Sea Premier to register or use the Disputed Domain Name or to offer for sale any of Dead See Premier’s products; 4. Photographs of Dead See Premier products on the website using the Disputed Domain Name are owned by Dead See Premier and are used without permission; […]. I declare that the foregoing is true and correct.” 5. Parties’ Contentions
In the Complaint the Complainant asserts that the facts of this case meet the UDRP criteria as to give rise to a transfer of the disputed domain name. Among other contentions, the Respondent in its pleadings invokes the contractual relationship between the Parties as a basis for a denial under the UDRP. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(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. Language of the Proceeding
On December 10, 2013, the Center sent an email to the parties informing the Complainant that, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceedings shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the proceedings. Rules paragraph 11(a). The language of the Registration Agreement in this case is German and the Complaint was filed in English. As a result, the Center invited the Complainant to provide at least one of the following: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into German; or 3) submit a request for English to be the language of the administrative proceedings.
On December 10, 2013 the Complainant submitted a request for English to be the language of the administrative proceedings. On December 11 and 12, 2013, the Respondent submitted a request for German to be the language of the administrative proceedings.
It is to be remembered that panels have found that, in certain situations, where the respondent can apparently understand the language of the complaint, and the complainant would be unfairly disadvantaged by being forced to translate the Complaint, the Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement (WIPO Overview 2.0, para. 4.3).
In the present case, the disputed domain name as well as the content of the website connected to it appears to be in English. Furthermore, it appears from the Respondent’s email communication of December 12, 2013, that the Respondent is familiar with the English language. As a result, it appears that the Respondent understands the English language.
Considering the above, the Panel accepts the Complaint in English and the Response in German, and shall render its decision in English. B. Withdrawal of the Complaint
The Complainant’s request to voluntarily terminate the proceedings without prejudice, to which the Respondent objected, is denied by this Panel.
As stated in Donald J. Trump v. Point Pub Liquors,WIPO Case No. D2011-1946: “[…] Rules paragraphs 17 and 18 address the termination of proceedings, but both paragraphs are inapplicable to applications for voluntary termination. Pursuant to paragraph 10(b) of the Rules, the Panel shall ensure that the Parties are treated with equality. Allowing Complainant to withdraw without prejudice at this point in the proceeding, after Respondent has invested significant time and money defending its position, would be unfair to Respondent, as nothing would prevent Complainant from reinitiating the proceedings at any time in the future. See Creo Products Inc. v. Website in Development, WIPO Case No. D2000-1490 (noting that dismissing a case without prejudice should be avoided wherever possible because it provides no finality to the dispute and respondent is left without protection against opportunistic and unmeritorious refiling).”
In other words, once a panel has been appointed, a panel may terminate an administrative proceeding in accordance with paragraph 17 (b) of the Rules, if, before the Panel’s decision is made, it becomes unnecessary or impossible to continue, the administrative proceeding for any reason, unless a Party raises justifiable grounds for objection. In the present case, the Respondent precisely objected to such termination on January 23, 2014, for the reasons described by the Panel in Donald J. Trump v. Point Pub Liquors,WIPO Case No. D2011-1946.
Absent any possibility to terminate, the Complainant requested the possibility to file a Supplemental Filing. In accordance with paragraph 12 of the Rules, the Panel may request, in its sole discretion, further statements or documents from either of the Parties. There is no provision in the Rules for a party to file an additional submission without leave of the panel. Under the expedited process provided under the Policy and Rules, each party is given one opportunity to put forward all the material on which it wishes to rely and is expected to do so.
In this case, after careful consideration of the circumstances, the Panel has decided not to grant the Complainant a right to file a Supplemental Filing, based upon the fact that the exceptional circumstances that led to a request to terminate the proceedings have already been clarified in the Complainant’s counsel Declaration of January 27, 2014.
As pointed out by the Respondent in the Response, the Parties are in legal proceedings in Israel concerning the performance of their contractual relationship. C. The Merits
Against the above background, the Panel briefly turns to the merits of the case. It is clear that the circumstances described above hardly inspire confidence in the Complainant’s case as originally presented. Noting the attempt by the Complainant to withdraw the case, and the admitted existence of a distributorship agreement between the Parties, the Panel finds no indications why the Respondent should lack rights or legitimate interests, and should have registered and used the disputed domain name in bad faith. Accordingly, the Complaint is denied. 7. Decision
For the foregoing reasons, the Complaint is denied.
Philippe Gilliéron
Sole Panelist
Date: February 10, 2014
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