Complainant is Antica Erboristeria S.P.A., of Rome, Italy, represented by Studio Turini, Italy.
Respondent is PPI, Inc, Bachir Benrabah of Surrey, Canada, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2014. On December 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2015. Respondent communicated to the Center on December 24, 2014, indicating that he would “prepare [his] reply in the near future.” Respondent did not submit any response by the deadline. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on January 20, 2015. On February 9, 2015, Respondent submitted a response.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on January 29, 2015. 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
Complainant is an Italian company founded in 1960 which specializes in natural hair dye and hair care products for professional and direct customer use. Complainant is the owner of the trademark HERBATINT which it uses in connection with natural hair coloring products, shampoos and other hair care products. Complainant owns United States Trademark Registration No. 1,790,046, registered in 1993 for the mark HERBATINT accompanied by a logo and International Trademark Registration No. 581992 registered January 30, 1992. Complainant also owns corresponding trademark registrations in Italy, Finland, the United Kingdom of Great Britain and Northern Ireland (“UK”) and other countries.
The disputed domain name was registered on June 22, 2000 and, at the date of filing the Complaint, resolved to a website purporting to offer hair care products for sale under the brand “Herbatint”. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant’s HERBATINT trademark, that Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions by the deadline. However, the Panel has considered Respondent’s late Response submitted February 9, 2015. In its Response, Respondent claims that it had a distribution contract with Complainant in the Gulf Region of the Middle East and has been selling HERBATINT products for a long time. 6. Discussion
According to paragraph 4(a) of the Policy, for this Complaint to succeed, Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to a trademark or a service mark in which Complainant has rights; and
(ii) 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 Complainant has rights in the trademark HERBATINT. Complainant owns United States Trademark Registration No. 1,790,046, registered in 1993 for the mark HERBATINT accompanied by a logo and International Trademark Registration No. 581992 registered January 30, 1992. Complainant also owns corresponding trademark registrations in Italy, Finland, the UK and other countries. These registrations predate the registration of the disputed domain name by many years.
The disputed domain name incorporates the HERBATINT mark in its entirety. In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark. See Research in Motion Limited. v. One Star Global LLC,WIPO Case No. D2009-0227; see also Swarovski Aktiengesellschaft v. Gsgjxbkxj Oijvioxub, WIPO Case No. D2013-1708. Furthermore, the addition of the Top-Level Domain “.com” is also non-distinctive because it is required for the registration of a domain name.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Complainant must show a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Complainant contends that it has not authorized, licensed or otherwise permitted Respondent to use the trademark HERBATINT or to apply for any domain name incorporating that mark. Complainant submits that Respondent is not an authorized reseller of HERBATINT products, and there is no direct reference to Respondent being an authorized reseller on its website.
The prima facie case presented by Complainant shifts the burden of production to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Respondent claims that it has been selling HERBATINT products for a long time through its website located at the disputed domain name, and that in 1994 it entered into an exclusive distributorship for the Gulf Region of the Middle East (Saudi Arabia, the United Arab Emirates, Kuwait, Oman, and Bahrain). Respondent’s website offers to sell products bearing Complainant’s HERBATINT mark and indicates prices in Canadian dollars as well as in Saudi Riyals. The website also provides the option to view the page in English, Arabic and French. However, Respondent did not present any evidence of such a contract or evidence of any sales of HERBATINT products in that region or anywhere else and the Complaint is devoid of any mention of a former business relationship of any kind for the Panel to determine whether Respondent is or ever was an authorized reseller of Complainant’s products. In addition, Respondent concedes that it “does not claim ownership of the trade mark but continue selling herbatint through their website.”
Respondent is using to operate what purports to be an online shop that offers only HERBATINT products. The website is crude, consisting of one page showing three HERBATINT products. There is no online order form. Respondent is apparently attempting to create the impression that the website at “www.” is authorized by Complainant, which Complainant contends is false. In order to claim that it is a reseller making a bona fide offering of goods and services and thus has a legitimate interest in the disputed domain name, Respondent’s use must meet certain requirements. These include the actual offering of the goods and services at issue, the use of the site to sell only the trademarked goods and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. There is no disclosure on Respondent’s website of Respondent’s relationship with Complainant. Regardless of whether Respondent is or ever was an authorized reseller of Complainant’s products, the Panel finds that a lack of disclosure of Respondent’s relationship to Complainant wrongly suggests to consumers that either Respondent is Complainant (noting the disputed domain name consists entirely of Complainant’s trademark with the “.com” suffix) or that Complainant endorses or approves Respondent’s website and products.
There is nothing in the case file that indicates that Respondent has a right or legitimate interest in the disputed domain name. The Panel finds there is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant or that Respondent has any other rights or legitimate interests in the HERBATINT mark. The Panel also finds that there is no evidence that Respondent is engaged in a bona fide offering of goods or services (in light of the discussion in the previous paragraph), that Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use, or that Respondent is commonly known by the disputed domain name.
Thus, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
The record shows that Complainant owns trademark rights in HERBATINT that pre-date the registration of the disputed domain name, which contains Complainant’s trademark in its entirety. In view of the images of what appear to be Complainant’s HERBATINT products on Respondent’s website, the Panel finds that Respondent was aware of Complainant and its rights in the trademark HERBATINT when registering the disputed domain name given its assertion that it was under a distributorship agreement with Complainant. Even if such a relationship existed, Respondent has not provided any evidence that it was authorized to register a domain name containing Complainant’s mark.
Respondent’s website to which the disputed domain name resolves is using the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website. In particular, Respondent is using the HERBATINT mark throughout the website in order to offer for sale various purportedly genuine HERBATINT products. The use of a complainant’s mark in a domain name by a registrant for the sale of products that are similar or identical to a complainant’s products is consistent with a finding of bad faith use under the Policy. See Swarovski Aktiengesellschaft v. Tevin Duhaime, WIPO Case No. D2012-2170.
Therefore, the Panel finds the disputed domain name was both registered and used in bad faith, and that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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
Lynda J. Zadra-Symes
Sole Panelist
Date: February 23, 2015
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