The Complainant is Marico Limited of Mumbai, India, represented by Lall Lahiri & Salhotra, Advocates Patent and Trademark Attorneys, India.
The Respondent is Domain Privacy Service FBO Registrant of Provo, Utah, United States of America ("United States") / Arshiya Merchant, USA Wholesale & Retail Store Inc of Lynbrook, New York, United States. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with FastDomain, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 22, 2015. On October 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 22, 2015, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 23, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on October 23, 2015.
The Respondent submitted informal communication on October 26, 2015. Further to a request from the Complainant, the Center suspended the proceeding on October 30, 2015. On November 28, 2015, the Complainant requested the proceeding be reinstituted. Accordingly, the Center reinstituted the proceeding on November 30, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2015.
The Respondent submitted informal communications on November 30, 2015 and December 11, 2015. The Center did not receive a formal Response from the Respondent.
The Center appointed John Swinson as the sole panelist in this matter on December 30, 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
The Complainant is Marico Limited, a large FMCG (fast-moving consumer goods) company based in India. The Complainant sells its products in over 30 countries around the world. One of the Complainant's major brands is "Parachute", which is used in relation to hair oil and body lotion.
The Complainant owns a number of registered trade marks for PARACHUTE, both in India and internationally (the "Trade Mark"). The Trade Mark was originally registered as a word mark in India on January 3, 1983, by the Complainant's predecessor (and it had been registered as part of a logo or label for many years prior to that). The Complainant appears to have taken over from its predecessor in 1990, and has been operating the company and using the Trade Mark since that time.
The Complainant sells its products under the Trade Mark via a website at "".
The Respondent is Arshiya Merchant of USA Wholesale & Retail Store Inc of the United States. Based on informal email communications sent by the Respondent to the Center, the Respondent is a reseller of the Complainant's Parachute products.
The Disputed Domain Name was registered on July 19, 2012. The website at the Disputed Domain Name currently features an error message, but previously resolved to a website at which consumers could purchase the Complainant's Parachute products. 5. Parties' Contentions A. Complainant
The Complainant makes the following submissions. Identical or Confusingly Similar:
The Disputed Domain Name incorporates the whole of the Trade Mark. The addition of the words "coconut oil" reinforces the association of the Disputed Domain Name with the Complainant. This is sufficient to establish confusing similarity. Given the reputation of the Trade Mark, most Internet users who see the Disputed Domain Name are likely to recognize the Trade Mark and assume the website at the Disputed Domain Name is owned, controlled or approved by the Complainant. Rights or Legitimate Interests:
The Respondent has no relationship with the Complainant. The Respondent is not a licensee and has not obtained any authorization to use the Trade Mark. The Respondent is falsely claiming a legitimate interest as the Complainant's New York distributor.
The Respondent registered the Disputed Domain Name long after the Complainant obtained rights in the Trade Mark. The Respondent is using the Disputed Domain Name to piggy back off of the Complainant's goodwill in the Trade Mark, which does not constitute bona fide use. Registered and Used in Bad Faith:
The circumstances indicate that the Respondent registered the Disputed Domain Name with the dishonest intention to mislead and divert customers. The Respondent is falsely claiming to be the Complainant's distributor in New York.
As the Respondent is selling the Complainant's products, it is clear that the Respondent had prior knowledge of the Trade Mark and has acquired the Disputed Domain Name with the intention to gain profit by misleading prospective customers into believing that the Disputed Domain Name is related to the Complainant.
By offering the Complainant's products on the website at the Disputed Domain Name, the Respondent is attempting to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's Trade Mark as to the source and affiliation of the Respondent's products with the Complainant.
These activities demonstrate registration and use of the Disputed Domain Name in violation of the Policy. B. Respondent
The Respondent did not submit a formal Response to the Complainant's contentions, but did provide an informal email communication stating that the Respondent registered the Disputed Domain Name with permission from the Complainant's United States sales manager, and that the Respondent only purchased products from the Complainant's authorized distributor in the United States.
The email did not address the elements of the Policy. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Trade Mark has been wholly incorporated into the Disputed Domain Name and combined with a descriptive term (i.e., "coconut oil"). The term "coconut oil" is descriptive of one of the Complainant's leading products which is sold under the Trade Mark, and which Internet users familiar with the Complainant's products are likely to associate with the Complainant. These factors serve to increase the confusing similarity.
The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
Rights or legitimate interests can be demonstrated by the Respondent's bona fide use of the Disputed Domain Name in connection with an offering of goods or services, before it received notice of the dispute (paragraph 4(c)(i) of the Policy).
The Respondent has been using the Disputed Domain Name to sell the Complainant's products in New York, United States. The Respondent stated in an informal email communication that the Respondent did so with permission from the Complainant's sales manager for the United States, and only obtained products from the Complainant's authorized distributor in the United States. No evidence of such permission was provided.
The Complainant states that the Respondent is not licensed to sell its products, and is falsely claiming to be an authorized distributor.
It is helpful to consider the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 ("Oki Data") and the principles described in that decision in relation to bona fide use of a Disputed Domain Name by a reseller. Even if the Respondent was not an authorized distributor for the Complainant, the Oki Data principles have been extended to apply to resellers who do not have a contractual relationship with a trade mark owner (see, e.g., DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481).
The panel in Oki Data stated that a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if its use meets the following requirements:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trade marked goods (otherwise, there is the possibility that the respondent is using the trade mark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent's relationship with the trade mark owner; and
- the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trade mark owner of the ability to reflect its own mark in a domain name.
As this Panel stated in Pangaea Laboratories Ltd, Pacific Direct Intertrading Pty Ltd v. Astrix Pty Ltd,WIPO Case No. DAU2015-0013, "Oki Data is an exception to a general rule. The general rule is that it is generally not permissible to register a domain name that is the same as another's trade mark rights, knowing of those trade mark rights, to seek traffic to a commercial website. Oki Data is a narrow exception to this rule for legitimate resellers, distributors and dealers. Oki Data is also subject to any agreement between the parties."
At present, there is no website at the Disputed Domain Name, and it is unclear whether the Respondent continues to sell the Complainant's products.
Based on the evidence before the Panel, the Respondent's prior use of the Disputed Domain Name did not meet the third element of the Oki Data test. The Respondent does not adequately identify itself or its relationship with the Complainant anywhere on the website at the Disputed Domain Name. The Respondent states in different sections of the website that it is a distributor for "Parachute Hair Oil", and an authorized distributor. However, it does not mention the Complainant, or that the Complainant is the owner of the products and the Trade Mark.
The Panel accepts the Complainant's submission that it has not authorized the Respondent to use the Disputed Domain Name, or to sell the Complainant's products. While the Respondent claimed that it had permission to use the Disputed Domain Name from the Complainant's United States sales manager, the Complainant stated in response to the Respondent's informal email communication that the sales manager had no authority to give that permission. As such, "authorized distributor" is an inaccurate characterization of the Respondent's relationship with the Complainant.
Nowhere on the Respondent's website at the Disputed Domain Name does the Respondent identify itself, or provide its legal name or address. An Internet user visiting the Respondent's website at the Disputed Domain Name could easily be confused as to the Respondent's relationship with the Complainant. Use of the Disputed Domain Name in these circumstances is not legitimate. The Panel finds the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests.
The Respondent had the opportunity to file a Response to demonstrate its rights and legitimate interests in the Disputed Domain Name, but did not do so. Without further evidence from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Respondent registered the Disputed Domain Name on July 19, 2012. The Respondent claimed, in an informal email communication, that it did so with permission from the Complainant's United States sales manager. However, the Complainant has provided a sworn statement declaring that the Complainant has not given the Respondent permission to register or use the Disputed Domain Name. In the circumstances, the Panel accepts the Complainant's submission that the Respondent is not authorized to use the Disputed Domain Name.
While the Panel does not believe the Respondent's conduct was aimed at intentionally attempting to disrupt the Complainant's business activities, it remains that the Respondent registered and used the Disputed Domain Name, which incorporates the Trade Mark, without permission from the Trade Mark's owner.
The likely effect of this is that Internet users looking for legitimate avenues through which to purchase the Complainant's product were diverted to the Respondent's website, and sales were diverted from the Complainant, or from their authorized distributors, to the Respondent. This is evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
The Complainant succeeds on the third element of the Policy. 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.
John Swinson
Sole Panelist
Date: January 12, 2016
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