The Complainant is Indio Products, Inc., United States of America (“United States”), represented by Miller, Canfield, Paddock & Stone, PLC, United States.
The Respondent is Alain Orendain, Mystical Infinity Gift Shop, Philippines.
2. The Domain Name and RegistrarThe disputed domain name,
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2021. On September 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The WhoIs search conducted by the Complainant had named the registrant’s organization, but not the name of the registrant, Alain Orendain. The Complainant filed an amended Complaint on October 6, 2021, in section II B (7) of which the names of Alain Orendain of Mystical Infinity Gift Shop and Maria Orendain of Maria Music Publishing were added. Maria Orendain was identified by the Registrar as the Admin, Tech and Billing contact for the Domain Name. The amended Complaint was copied to the Respondent.
In this decision all references to the “Respondent” are to Alain Orendain of Mystical Infinity Gift Shop in whose name the Domain Name is registered. However, his sister, Maria Shallah Lequang (née Orendain), who has been in correspondence with the Center (see below), claims to be a business partner of his and to have been the owner of the Domain Name since 2012 (subsequently corrected to 2011). The email communications dated October 6, 7 and 29, 2021, and November 1, 2021 are referred to in greater detail below, but whatever may be the business relationship between Maria Shallah Lequang and the Respondent, the Panel finds in the absence of any contribution from the Respondent and on the balance of probabilities that they are in partnership and that the communications from Maria Shallah Lequang should be taken to be communications from the Respondent.
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 October 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Parties with Commencement of Panel Appointment Process on October 29, 2021.
On November 1, 2021, the Complainant submitted an unsolicited Supplemental Filing:
“in light of new information and a change in Respondent’s website at the disputed domain name..”.
In substance this filing does no more than repeat information apparent from the above-mentioned October 2021 correspondence between the Respondent and the Center, which is quoted in large part in section 4 below. Unsolicited filings are generally discouraged by panels. Here the Panel does not regard the filing as being of any assistance in coming to this decision and declines to accept it.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 5, 2021. 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.
Having read the Complaint the Panel sought clarification of aspects of it by way of Procedural Order No.1 issued on November 10, 2021. The Complainant provided the requested clarification by way of a filing in response on November 11, 2021.
In Procedural Order No. 1 the Respondent was given an opportunity to respond by way of the following invitation:
“If the Respondent wishes to comment on any response filed by the Complainant or provide any further information on its selection and use of the disputed domain name, the Respondent is invited to do so by no later than 4pm Geneva time on Thursday, November 18, 2021.”
The Respondent did not respond to that invitation.
4. Factual BackgroundThe Complainant is a California corporation, claiming to be “a pioneer in the esoteric market” and “a well-respected source of esoteric candles, spiritual water, oils, powders and sachets”. One of its main product lines is the Anna Riva product line.
The Complainant is the registered proprietor of United States Trade mark Registration No. 5,825,390 ANNA RIVA (standard character mark) registered on August 6, 2019 (application filed June 15, 2018) in class 3 for various goods including bath crystals, incense powders, spiritual aromatic oils, scented spiritual and religious toilet waters and shampoo. The registration features a first use in commerce claim of June 15, 1994.
The Complainant shares common ownership with a company named Wisdom Products, which is a retailer of esoteric products of the Complainant and other manufacturers.
The Domain Name was registered on January 25, 2011. As at July 9, 2021, it was connected to an online shop headed “Anna Rivas” and with a central banner reading “ANNA RIVAS PRODUCTS – Incense, Books, Oils, Amulets – Shop Now”. A page headed “About Us” features a paragraph reading as follows:
“Anna Riva’s Shop is an official online retailer of Anna Riva Products and other religious products. In business for nearly a decade, and with over 50,000 Anna Riva Products Sold, we look forward to working with you as we specialized in products by Anna Riva who is a well-known American occultist and also is the author of different books and the main manufacturer of hoodoo spiritual supplies.”
Below that paragraph is a line reading:
“Prices on all Anna Riva products are GUARANTEED to be the lowest you will find on or off the Internet!”
As indicated in the following correspondence, on October 6, 2021 or shortly thereafter the Respondent instructed its webmaster to remove Anna Riva products from the website and “ANNA RIVAS PRODUCTS” in the central banner on the homepage has been replaced by “AZURE GREEN PRODUCTS”.
On October 6, 2021, at three different times, the Respondent sent to the Center what is for the most part the same email. The first version timed at 18.57 and addressed to the Complainant on which the Center was copied in was sent from the email address, “annarivashop@[...]”, read as follows:
“My name is Maria Shallah Lequang. I have owned the domain annarivas.com since 2012. For 9 years I owned the website and and we purchase our products in Azuregreen.com which I am Authorized Distributor and Azuregreen.com for more than 10 years and they also caters Anna Rivas Products before but now since they do not cater and sell Anna Rivas products therefore all the AnnaRivas orders is placed in https://www.wisdomproducts.com/ website which is owned by Indio. See attached screenshot for your reference of all the transactions made we have with https://www.wisdomproducts.com/ since 2012. Account email login is […]therefore all the AnnaRivas products we sold on the website were legit because https://www.wisdomproducts.com/ is owned by Indio. And also, I will advise our webmaster to remove the AnnaRivas products in our website and we will no longer place the order from Indio website which is the https://www.wisdomproducts.com/
My husband Eli Lang Lequang is a serviceman/veteran and a lieutenant from the military will contact JAG H.Q. (Judge Advocate General's Corps, United States Army) to obtain an attorney for this matter if you continue this harassment and without basis and we will not hesitate to file a legal complaint in the lower court for the damages amounting to $500,000 USD.
Best Regards,
Maria Shallah Lequang”
The attachments to that email comprised a list of orders placed by the Respondent with the Complainant’s sister company, Wisdom Products, from February 8, 2012 to October 3, 2021. The orders were placed through the Respondent’s email address registered with Wisdom Products.
At 20.49 on October 6, 2021, the Respondent emailed the same message to the Center, but with the following differences:
(i) The message was headed “OUR INDIO REGISTERED BUSINESS EMAIL ADDRESS IS […].”
(ii) The message was sent from that email address.
(iii) An additional sentence in the first paragraph read: “We have email conversation and business license submitted to Indioproducts – see email conversation.”
(iv) After “$500,000 USD” the following had been added “because all your claims are fake.”
(v) After “matter” in the second paragraph the words “because there are a lot of scammers with this kind of tactics of extortion and” had been inserted before “if you continue”.
(vi) It had an additional line reading: “I also responded to our business email which is annarivashop@[...].”
The attachments to this email comprised, in addition, correspondence between the Complainant and the Respondent concerning orders placed by the Respondent with the Complainant in the course of 2015.
At 20.50 on October 6, 2021, the Respondent emailed substantially the same message to the Center, but with the following differences:
(i) The message was sent from the “annarivashop@[…]” address.
(ii) After “is owned by Indio” in the first paragraph the following replaces (iii) above: “And also we are an Authorised Distributor of Indio Products. I have all the email conversation and business license submitted to Indioproducts therefore all the business transaction with them is LEGIT – see email conversation.”
(iii) The text at (vi) was omitted.
On October 7, 2021 at 10.15 the Respondent emailed the Center in the following terms:
“See attached transactions I have made with Indio and license we have submitted to them for your perusal. I have all the documents and correspondence to support our dispute and I will submit them to our Attorney in JAG H.Q. (Judge Advocate General’s Corps, United States Army) and I already advise my husband Eli Lang Lequang regarding this matter so that necessary action will take place.
Best Regards
Maria Shallah Lequang”
The attachments to this email comprised:
(a) a State of Arizona Trade Name Certification for the name “Azure Infinity” registered in the name of Maria Shallah Lequang of an address in Arizona and a retail Transaction Privilege Tax License issued to her at Azure Infinity (both dated October 2014); and
(b) invoices and order quotes and acknowledgments issued by the Complainant to “Green Clover” at the Arizona address for substantial quantities of products supplied to Green Clover in the course of August and September 2015;
(c) A California Resale Certificate form completed by Maria Lequang and dated September 21, 2015.
On October 7, 2021 at 19.50, the Respondent emailed the Center in the following terms:
“Alain Orendain is my brother and he is my business partner same with my husband Eli Lequang that helps me run and build my websites and other businesses that I have furthermore there is nothing that we will be explaining to your illegitimate organization because we are not certain if this is a scam and the information or Annex that you fabricate which you only took in GOOGLE or let me say your ‘Google University’ is not even credible enough and fake news, I owned that domain since 2012 and you are showing that Indio claims that they own the domain Anna Riva which they only register this name last ‘2019’ and you have the audacity to waste our time. Our domain is Anna Rivas with ‘S’ and I have owned this domain since 2012, how dare you to claim my domain, which I owned since 2012 therefore if you want more information, you can contact our Lawyer. My Lawyer advised me not to entertain this type of fraudulent activity.
And also, My husband already reported this to JAG H.Q. (Judge Advocate General’s Corps, United States Army). And also, we will report to the agencies in the United States that me and my husband reside in or we have a business presence in). [There then followed links to the offices of the Attorneys General of Texas, California, Washington, Florida, Arizona and Delaware] All complaints will be filed and written copies will also be sent via certified postal mail.”
On October 7, 2021, the Center responded by email as follows:
Dear Madam,
“We refer to your attached email communications of October 6 and 7, 2021.
The Center is currently verifying that a Complaint filed against ‘Alain Orendain, Mystical Infinity Gift Shop’, the Registrar confirmed registrant details for the disputed domain name
In addition, the sender of the below email “Maria Shallah Lequang” is invited to clarify her relationship to “Alain Orendain, Mystical Infinity Gift Shop” and to provide information sufficient to verify such relationship.
We will forward your above referenced communication to the Panel when appointed.”
On October 29, 2021, the Respondent emailed the Center as follows:
“Since 1/27/2011 - I purchased and owned the domain from 1&1 up until today October 28, 2021 (10 years). See attached invoices for your reference that I owned the domain since 1/27/2011. As per our Lawyer from JAG H.Q. (Judge Advocate General’s Corps, United States Army), there is nothing to disclose any information as this is not considered legal and our Lawyers are on standby and ready to file complaints regarding this harassment. My husband Mr. Eli Lequang and I will consider selling our domain in the amount of $50,000 USD that is our only negotiation.”
The unchallenged evidence of the Complainant, supported by documentary evidence (Annexes 3 and 7 to the Complaint, amplified by the Complainant’s response to Procedural Order No. 1) demonstrates that the products offered for sale on the Respondent’s online shop included products competing with those of the Complainant e.g. Azure Green, Espiritu and Fox Craft oils. The evidence also demonstrates that orders for the Complainant’s products placed with the Respondent’s online shop at the Domain Name can be met with an offer to substitute a product not of the Complainant’s manufacture where the ordered product is not in stock.
The evidence demonstrates that the Respondent uses a drop shipper, AzureGreenW of an address in Massachusetts, United States, for the delivery of orders it receives. The advantages of using a drop shipper are explained on the AzureGreenW website (Annex 9 to the Complaint):
“For those of you unfamiliar with the term, Drop Shipping is a system that allows us to ship products out to your customers under your business name without you needing to stock your own inventory space, or spend valuable time on the shipping process. Our name appears nowhere on the packaging or paperwork of your order.”
On November 1, 2021, an email communication from the email address that the Respondent claimed to be its “registered business email address” with the following content:
“Annarivas(first name) is a one word as you can see in the about us page. Anna(first name) Riva(last name) is a two words and without “S” there is alot of difference as advised by our Lawyer when it comes to legal name. We have more than 20 website that we managed therefore it is our prerogative because they are available in the market and domain company allow us to purchased it, if they after the domain why they only register the name Anna Riva last 2019 and we purchased that domain since 2011 which I never heard from their Company before I purchased this domain. This is just a waste of our time and it seems we are getting around the bush of this idiocity and our Lawyer advised that we do not need to explain anything because all the products that we purchased is directly from Indio in Wisdom Products website: https://www.wisdomproducts.com/ and we do not deal nor have business with them anymore and if they keep on bugging to us then we will advise our Credit card Company to file a chargeback to all the transactions we have made in wisdom products website and my husband Eli Lang Lequang is a serviceman/veteran and a lieutenant from the military will report this conversation/correspondence to JAG H.Q. ( Judge Advocate General’s Corps, United States Army ) and our attorney will handle this legal matter. This is my last email and I will no longer entertain nor respond to all of this email.”
5. Parties’ Contentions A. ComplainantThe Complainant contends that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions. However, as indicated in section 3 above, on October 6, 7, and 29, 2021, and November 1, 2021, the Center received the emails from the Respondent (two of them signed by Maria Shallah Lequang) set out in section 4 above. While those emails cannot constitute a formal response within the Rules, the Panel has read them and taken them into account in coming to this decision.
6. Discussion and Findings A. GeneralAccording to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly SimilarThe Domain Name comprises the Complainant’s ANNA RIVA trade mark, followed by an additional “s” and the “.com” generic Top Level Domain identifier.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The Complainant’s ANNA RIVA trade mark is readily recognizable in its entirety in the Domain Name. Contrary to the Respondent’s contention, the Panel finds that the addition of the extra “s” has no effect for the purpose of the analysis of confusing similarity under the first element of the Policy. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate InterestsThe Complainant recites the circumstances set out in paragraph 4(c) of the Policy, any of which if found by the Panel to be present shall demonstrate rights or legitimate interests for the purposes of this element of the Policy, and contends that none of them is applicable.
The Complainant asserts that it has given the Respondent no permission to use its ANNA RIVA trade mark. It asserts that the Respondent is not an official online retailer of the Complainant’s products as it claims. It asserts that while the Respondent claims to have products in stock, it does not have any stock, but instead makes use of the services of drop shippers, such as AzureGreenW (for an explanation see section 4 above), thereby obviating the need for stock. It contends that by way of the Domain Name featuring its ANNA RIVA trade mark and the claim that its “Anna Riva’s Shop is an official online retailer of Anna Riva Products” the Respondent is seeking to pass itself off as having an official association with the Complainant that it does not have.
The Panel finds that the Complainant has made out a prima facie case; in other words a case calling for an answer from the Respondent.
The Respondent has not filed a formal response, but, as indicated above, the Panel has read the correspondence that the Center has received from the Respondent, which is set out in section 4 above. From that correspondence the Panel understands the Respondent’s argument to be:
(1) The Respondent has owned the Domain Name since 2011 and has used it throughout for the sale of the Complainant’s products;
(2) The Complainant only registered the ANNA RIVA trade mark in 2019 several years after the registration of the Domain Name;
(3) The Respondent’s name is different. It features an “s” at the end;
(4) The Respondent had never heard of the Complainant at the time of the registration of the Domain Name;
(5) All the Anna Riva products that the Respondent has sold have been genuine products of the Complainant, the bulk of them having been acquired from Wisdom Products, a sister company of the Complainant and also direct from the Complainant;
(6) The Respondent is or has been an Authorised Distributor for AzureGreen.com;
(7) The Respondent has licences from the States of Arizona and California in the United States (and perhaps others) for the retail sale of the products sold by the Respondent.
As to (1) above, the Panel accepts on the face of the evidence attached to the Respondent’s correspondence with the Center that the Respondent has used the Domain Name since 2011/2012 for the online retail sale of inter alia the Complainant’s products.
As to (2) above, it is true that the Complainant’s trade mark registration for ANNA RIVA post-dates by many years the registration of the Domain Name, but the Complainant claims unregistered trade mark rights in respect of the trade mark ANNA RIVA going back “decades” (Annex 11 - declaration of the CEO of the Complainant). Ordinarily, the Panel would require more than a bare assertion in a declaration of a complainant to be satisfied of the existence of unregistered trade mark rights. However, in this case the Respondent’s own website (Annex 3 to the Complaint) makes it clear that from the outset back in 2011/2012 (that the Panel has confirmed with Web Archive) the Respondent has regarded “Anna Riva” as a brand:
“Anna Riva’s Shop is an official online retailer of Anna Riva Products and other religious products. In business for nearly a decade, and with over 50,000 Anna Riva Products Sold, we look forward to working with you as we specialized in products by Anna Riva who is a well-known American occultist and also is the author of different books and the main manufacturer of hoodoo spiritual supplies.”
Thus the Panel is satisfied that the Complainant’s unregistered trade mark rights predate registration of the Domain Name. The Panel further notes the June 15, 1994 first use in commerce claim for the Complainant’s ANNA RIVA trade mark registration.
As to (3) above, the point is disingenuous. As is clear from the screenshot of the Respondent’s website, if the domain name system permitted apostrophes, the Domain Name would read “Annariva’s.com”. A similar point emerges in the email address recently used from time to time by the Respondent, “annarivashop@[...]”, which clearly refers to the Anna Riva shop, not Anna Rivas hop. While the Domain Name features an additional “s”, it is plain that the Domain Name is a direct reference to the Complainant’s trade mark.
As to (4) above, while it may perhaps be that the Respondent had not heard of the Complainant at date of registration of the Domain Name, the wording on the website and the October 2021 correspondence with the Center makes it clear that the Respondent has been aware of Anna Riva products, the products of the Complainant, from the outset. The Panel finds on the balance of probabilities that the Respondent’s selection of the Domain Name can only have been with knowledge of the “Anna Riva” brand.
As to (5) above, the Panel has no reason to doubt its veracity.
As to (6) and (7) above, while the Respondent may be or have been an Authorised Distributor for AzureGreen.com and undoubtedly has and/or has had licences to conduct retail trade in various states of the United States, there is nothing before the Panel to support the claim that the Respondent’s “Anna Riva’s Shop is an official online retailer of Anna Riva Products”.
However, there are circumstances under which the unauthorized use of a third party’s trade mark in a domain name may give rise to the acquisition by a respondent of rights or legitimate interests in respect of that domain name. The issue frequently falls to be considered where, as here, a respondent is (or has been) using the disputed domain name to connect to a website selling the goods of the complainant.
The issue is addressed in Section 2.8.1 of WIPO Overview 3.0:
“Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test” [a test derived from the decision in Oki Data Americas, Inc. v. Asdinc.com WIPO Case No. D2001-0903], the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”
Here, the Domain Name fails the Oki Data test under (ii) and (iii). The evidence shows that the Respondent also uses its website to sell the products of other manufacturers and plainly the website does not “accurately and prominently disclose the registrant’s relationship with the trademark holder”. Contrary to what was stated on the website at the date of the Complaint, the Respondent has never been “an official online retailer of Anna Riva Products”. The statement indicates that the Respondent has (or has had) an official relationship with the Complainant going beyond being a mere purchaser and reseller of the Complainant’s products.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad FaithIn the view of the Panel the Domain Name was selected for the very reason that it has been used not only to indicate that it sells the Complainant’s products, but that it has a close connection with the Complainant consistent with the claim appearing on the website that it is an official online retailer of the Complainant’s products, indicating a non-existent authorization and endorsement by the Complainant.
Paragraph 4(b)(iv) of the Policy provides that a circumstance leading to a finding of bad faith registration and use under the Policy is where the Respondent has used the Domain Name intentionally to attract Internet users to the Respondent’s website for commercial gain “by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of [the] website …”.
The potential for damaging confusion is obvious and on more than one front. Internet visitors to the Respondent’s original website would be likely to believe the Respondent’s claim that it was an official online retailer of the Complainant’s products and taken comfort from that fact that the price guarantee was true, whereas the Complainant has produced evidence in response to Procedural Order No 1 to show that the Respondent’s prices were significantly in excess of those available on the Wisdom Products website. Inevitably, reputational damage to the Complainant would follow when purchasers realized that they had been deceived.
Here, it is clear that the Respondent (a) registered the Domain Name for the purpose for which it has been using it and (b) has been using it in a manner calculated to induce visitors to its website to believe that they are trading with the Complainant or an entity authorized by the Complainant.
The fact that the objectionable use now appears to have ceased is of no moment. In the view of the Panel, while the Domain Name remains in the hands of the Respondent, it represents a malicious threat hanging over the head of the Complainant and, as such, a continuing bad faith use of the Domain Name.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Initially, the Panel was concerned that the Complainant’s delay in bringing this complaint in respect of a domain name so clearly targeting one of its primary trade marks might in some way raise a question over the merits of the Complainant’s case. However, on closely studying the volume of invoices and inter-party correspondence attached to the Respondent’s emails to the Center, the Domain Name featured nowhere. All pre-complaint orders and correspondence were conducted by the Respondent using email addresses and business names bearing no resemblance to the Complainant’s ANNA RIVA trade mark. The Respondent appears to have gone to significant lengths to avoid drawing the Complainant’s attention to its use of the Complainant’s trade mark. The Panel does not know when the Complainant first became aware of the Respondent’s website, but accepts that it might have been relatively recently.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Tony Willoughby
Sole Panelist
Date: November 22, 2021