The Complainants are Endota Product Pty Ltd, Endota (No. 1) Pty Ltd, and Endota Holdings Pty Ltd, Australia, represented by HDL Legal & Consulting Pty Ltd, Australia.
The Respondent is DNS Admin, Domain Privacy Ltd, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2020. On June 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2020, 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 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2020. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 12, 2020. 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 Complainants are a group of Australian corporations registered in the State of Victoria, Australia which operates an Australia-wide day spa business with 100 locations in Australia. The Complainants trade as “Endota”, “Endota Spa”, and “Endota Day Spa”. Within said group, Endota Product Pty Ltd owns and licenses trademarks and other intellectual property to both Endota-branded health spa franchises and to group company owned health spas in Australia. Endota (No. 1) Pty Ltd operates Endota-branded health spas and issues Endota-branded health spa franchises in Australia. Endota Holdings Pty Ltd owns and licenses ENDOTA trademarks and other intellectual property to Endota-branded health spa franchises and to group company owned health spas. The Complainants own a variety of ENDOTA and ENDOTA-formative registered trademarks in respect of their activities, the earliest of which appears to be Australian registered trademark no. 760696 for the word mark and stylized word ENDOTA registered on March 5, 1999 in class 3. The owner of said mark is Endota (No. 1) Pty Ltd. The disputed domain name was registered on January 5, 2006. Little is known about the Respondent. Upon Registrar verification, the Registrar revealed that the underlying registrant of the disputed domain name is a privacy service. The Complainants state that the disputed domain name is “dormant”, by which the Panel assumes it means it is inactive (when the Panel visited, it led to a pay-per-click page with links to spas). 5. Parties’ Contentions A. Complainants The Complainants list some 19 registered trademarks which they say that they have obtained in Australia and some 15 registered trademarks which they say that they have obtained in other countries and territories from China and the European Union to Singapore and the United States of America for the ENDOTA or ENDOTA-formative marks. The Complainants also list trademark applications which they have made but are still pending in respect of similar marks. The Complainants assert that the Respondent has no rights or legitimate interests by reason of the Complainants’ legitimate registration and ongoing use of the ENDOTA trademarks globally. The Complainants state that their spas have been in operation since about 2000 and add that the Complainants have amassed an enormous reputation for their Endota-branded spas based on significant use. The Complainants assert that they have spent a large amount of money between 2015 and the present day amounting to a total of around AUD 14,000,000 advertising such brand on radio and television (the Panel notes in passing that it has assumed the figures are quoted in AUD although the currency denomination is not mentioned by the Complainants). The Complainants assert that the Respondent would not be able to use the disputed domain name without it being misleading, deceptive, and mistaken for the Complainants’ business, or falsely associated therewith, or falsely indicating a non-existent sponsorship or affiliation or approval with or emanating from the Complainants. The Complainants state that they use the domain names The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings To succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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. Preliminary Issue - Consolidation of Complainants The present Complaint has been filed by multiple Complainants, albeit from the same corporate group. The Complainants do not however expressly request consolidation of their respective complaints, nor do they provide any submissions on the topic. Paragraph 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides inter alia as follows: “Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.” As no submissions directly relating to consolidation have been made by the Complainants in this case, the Panel requires to consider the issue based on the Complaint as a whole. It is clear from their submissions that the Complainants are members of the same corporate group with a variety of relevant owned and licensed intellectual property shared between them. The Complainants have set out the individual activities performed by each one of them within the group. Based on this information, the Panel is satisfied that any targeting of the Complainants’ rights by way of the disputed domain name would be likely to affect the Complainants largely to the same or a similar degree, such that the Complainants would arguably have a common grievance. It follows that, if the Respondent were to engage in such targeting, this could be reasonably regarded as common conduct which would affect the Complainants in a similar fashion. In these circumstances, the Panel considers that it would be equitable and procedurally efficient to permit the Complainants to proceed with a consolidated Complaint. The Panel notes that the Respondent has not responded to the Complaint and thus has put forward no objection to any such consolidation. In the circumstances of this case noted above however, the Panel cannot identify or foresee any prejudice arising to the Respondent to such consolidation being accepted/ordered by the Panel. Accordingly, the Panel determines that the Complainants’ respective complaints against the Respondent in this case will be consolidated and will proceed to a decision on that basis. B. Identical or Confusingly Similar At the outset on this topic, the Panel notes that the somewhat perfunctory Complaint has merely provided a list of some 44 registered trademarks and pending applications with details of the owner or applicant of each. The Complainants state that printed copies are provided in their Annex 2, although the Panel notes that in an apparent oversight, none have actually been supplied. Annex 2 consists of a list of registered trademarks and trademark applications taken from the Australian Government’s “IP Australia” website on a search of the term “endota”. A complainant is not entitled to expect that a panel will go through a list of marks to visit the relevant trademark register and verify pertinent details including in particular the date of registration of each, the latter being important for consideration of the second and third elements under the Policy. Instead, best practice would be to provide a list of registered trademarks, indicating which ones the Complainants specifically rely upon and providing specific extracts from the relevant databases for those individual marks showing all of the necessary details. The Panel has, nevertheless, verified that Endota (No. 1) Pty Ltd is the owner of the registered trademark quoted in the factual background section above and has visited the relevant public register to obtain the pertinent details of registration (on the topic of the Panel engaging in limited factual research into matters of public record, see section 4.8 of the WIPO Overview 3.0). As such mark was the first on the Complainants’ list and the lowest mark number among its Australian trademarks, the Panel has assumed that this is the Complainants’ earliest registered trademark. Based on its review of the mark concerned, the Panel finds that the Complainants have, among them, UDRP-relevant rights in a trademark. The Panel notes in passing that, although they are cited by the Complainants, pending applications for registered trademarks would not by themselves have fulfilled the requirements of the Policy on this topic; instead, secondary meaning would need to be shown. Turning to the comparison exercise, the Panel notes that the second level of the disputed domain name is identical to said registered trademark. The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded during the comparison process in that this is required for technical reasons only. In all of these circumstances, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have therefore been satisfied. C. Rights or Legitimate Interests The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding in connection with registration and use in bad faith, discussed below, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith The Panel noted in connection with the first element assessment above that the Complaint is somewhat perfunctory. It contains a submission on registration and use in bad faith amounting to a single sentence expressed as a bullet point, namely, “The Respondent’s domain name is dormant”. No other submissions, for example, along the lines of section 3.3 of the WIPO Overview 3.0 and/or Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 nor any relative evidence have been provided. The Panel does find the argument made under the second element about the Complainants’ fame and the claimed inability of the Respondent to register the disputed domain name without reference thereto, to be impliedly supportive material but it is of little assistance in the end. As section 3.3. of the WIPO Overview 3.0 notes, non-use of a domain name would not prevent a finding of registration and use in bad faith under the doctrine of passive holding. Panelists will look at the totality of the circumstances in each case. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. The Respondent in the present case has not replied to the Complainants’ contentions and remains concealed behind a privacy service even after Registrar verification. These factors are possibly relevant to the third element assessment but, in the Panel’s view, they are insufficient on their own for a finding of registration and use in bad faith in the circumstances of the present case. Of greater importance to the merits on this topic is the fact that the Complainants’ relatively brief submissions regarding the alleged degree of reputation of their ENDOTA mark are unsupported by any documentary evidence. The Complainants add that their website can be viewed at a given URL but this is equally incapable of providing independent support for the Complainant’s contentions and in any event it says nothing of sales figures or advertising or the like, stating only that the Complainants’ spa was founded in 2000. In these circumstances, the Panel has before it only the Complainants’ unsupported allegations and is neither in a position to assess the distinctiveness and reputation of the Complainants’ ENDOTA mark nor the implausibility of any potential good faith use of the disputed domain name on the Respondent’s part. Even if the Complainants had put forward suitable evidence to support their submissions as to their reputation between 2015 and the present day, it must be borne in mind that the disputed domain name was registered in 2006, and that the Complaint is silent as to the Complainants’ reputation and marketing activities around and before 2006 (even if taken at face value that it was founded in 2000). In these circumstances, for registration in bad faith to be made out, the Panel would have expected to see both submissions and evidence relating to the reputation of the Complainants’ mark at that date. Historic WhoIs entries for the disputed domain name or archived entries for the content of the relative website over the period to date, if any, would have been of particular assistance to the Panel’s review of the merits – especially if such evidence would point to a later acquisition of the disputed domain name in the years for which the Complainants have provided sales figures. Without any of this material, it is not possible for the Panel to find on balance of probabilities that the disputed domain name was more probably than not registered in the knowledge of the Complainants’ rights and with intent to target these. In these circumstances, the Complainants have not proved that the disputed domain name was registered and has been used in bad faith. The Complaint therefore fails. 7. Decision For the foregoing reasons, the Complaint is denied. Andrew D. S. Lothian
Sole Panelist
Date: August 28, 2020
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