ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Paradise International General Trading LLC v. Suwanna Mayeux Case No. D2023-1569 1. The Parties The Complainant is Paradise International General Trading LLC, United Arab Emirates, represented by Abou Naja Intellectual Property, United Arab Emirates. The Respondent is Suwanna Mayeux, Thailand, self-represented. 2. The Domain Name and Registrar The disputed domain name is registered with IONOS SE (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2023. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Protected for privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on the following day providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 19, 2023. The Center received email communications from the Respondent on April 18, April 19, and April 24, 2023. 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 April 26, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2023. The Response was filed with the Center on May 10, 2023. The Center appointed Matthew Kennedy as the sole panelist in this matter on May 22, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and page 2 Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. On May 24, 2023, the Center received a communication from the Complainant requesting an opportunity to make a supplemental filing. On the same day, the Center received a communication from the Respondent requesting an opportunity to reply to any supplemental submission by the Complainant. 4. Factual Background The Complainant is an Emirati company established in 1989 that markets various products, including a hair loss solution known as Neo Hair Lotion. It holds multiple trademark registrations in multiple jurisdictions, including the following: - United Arab Emirates trademark registration number 332472 for GREEN WEALTH and device, registered on October 5, 2020, specifying goods in class 3; and - European Union trademark registrations numbers 018449325 and 018656439 for GREEN WEALTH and GREEN WEALTH NEO HAIR LOTION, respectively, registered on July 29, 2021 and June 3, 2022, respectively, specifying goods in class 3, and classes 3 and 5, respectively. The above trademark registrations are current. However, the Complainant's Indian trademark applications numbers 4787694 and 4787695 for GREEN WEALTH (Label) and GREEN WEALTH, both filed on December 19, 2020, were opposed and have not proceeded to registration. The Complainant has also registered the domain name that it uses in connection with a website where it offers for sale Neo Hair Lotion. The Respondent is an individual based in Thailand. The disputed domain name was created on March 30, 2022. It resolves to a website in English for a Thai company named Green Wealth Global Co. Ltd that offers for sale Neo Hair Lotion (Thailand version). The product box bears a GREEN WEALTH and device mark. The website presents Green Wealth Global Co. Ltd as an authorized distributor for Green Wealth Health Care Co. Ltd, the "original owner" of Neo Hair Lotion. The site displays photographs of Dr. Paiboon Maraprygsavan ("Dr. Paiboon") who is presented as founder and inventor of Neo Hair Lotion under Green Wealth Health Care Co. Ltd. The site displays a Green Wealth Global logo and a "Made in Thailand" logo. The contact street address and telephone number on the website match those of the Respondent in the Registrar's WhoIs database. 5. Parties' Contentions A. Complainant The Complainant submits that it is a well-known Emirati company established in 1989 and a pioneer in the field of the manufacture and marketing of cosmetics, essential oils, hair oils, soaps, shampoos, perfumes, and hair lotions, including perfumes and hair lotions based on mint. The disputed domain name is confusingly similar to the Complainant's GREEN WEALTH mark. The average consumer will certainly be confused by the disputed domain name and will assume that there is a relationship between the Complainant, the owner of the GREEN WEALTH trademarks, and the disputed domain name. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent attempted to illegally harvest the Complainant's efforts to establish the reputation of its trademarks by registering the disputed domain name to make an undue profit. page 3 The disputed domain name was registered and is being used in bad faith. The Respondent's sole intention is to use the disputed domain name to sell counterfeit products under the famous brand name GREEN WEALTH and mislead the Complainant's customers. The Respondent uses the disputed domain name with a website to sell counterfeit products that are an exact replica bearing the Complainant's GREEN WEALTH, GREEN WEALTH and device, and GREEN WEALTH NEO HAIR LOTION trademarks. The Respondent's website presents Green Wealth Global as the owner of these trademarks and as the source and producer of these products. B. Respondent The Respondent submits that it is a legally registered company in Thailand named Green Wealth Global Co. Ltd, and an authorized distributor for Green Wealth Health Care Co. Ltd, the legal owner of Neo Hair Lotion. Green Wealth Health Care is the rightful owner of the GREEN WEALTH trademark and the real and original owner of the Green Wealth Neo Hair Lotion brand in Thailand. The disputed domain name is not identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has no legitimate or genuine rights over the trademark or brand name "Green Wealth" or variants thereof. The actual owner of the brand name and original manufacturer of Green Wealth products is Green Wealth Health Care Co. Ltd, which is not a party to this case. The Complainant is not the trademark owner, it merely acts as a distributor under the authorization of Green Wealth Health Care Co. Ltd and its owner, Dr. Paiboon. The Complainant applied for its GREEN WEALTH trademark in India in bad faith, pretending to be the owner, and filed applications in other jurisdictions without the knowledge or permission of the brand owner, claiming priority from the Indian application. The Complainant has not proven that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Respondent is an authorized distributor. The Respondent has a distribution agreement in Thailand with the brand owner. The Complainant produces no evidence that it is a manufacturer; it merely sells products manufactured in Thailand. The Respondent never pretended to be the owner of the GREEN WEALTH mark; instead, its website clearly recognizes that the actual brand owner is Green Wealth Health Care Co. Ltd and Dr. Paiboon. The Complainant produces no evidence that the Respondent has ever sold counterfeit products and no evidence that the Respondent ever tried to mislead customers. The Respondent registered the disputed domain name with a bona fide intention to use it for its business under the authorization and instruction of the actual brand owner. The disputed domain name was not registered nor is it being used in bad faith. The Respondent's website only sells genuine and authentic Green Wealth products manufactured in Thailand with the complete authorization of the actual brand owner Green Wealth Health Care Co. Ltd. The Respondent is officially authorized by the brand owner to sell Green Wealth Neo Hair Lotion and related products. The Respondent has received positive reviews from its clients worldwide. The Respondent has never explicitly or impliedly pretended to be associated with the Complainant in any manner. The Respondent made no actions intended to misdirect Internet users or to mislead consumers to believe that there is a connection between the Parties. The Respondent submits that the Complainant has deliberately tried to misuse the law to eliminate fellow distributors like the Respondent by filing false UDRP complaints and bogus trademark infringement takedowns. The Complainant's intention is to become the sole distributor of Green Wealth Health Care Co. Ltd products. The Respondent's website does not display anything that would lead anyone to believe that it belongs to the Complainant. The Respondent never tried to impersonate a representative of the Complainant. The Parties formerly sold products with the same packaging and labelling provided by the owner, but the Complainant has recently added its name as distributor to claim rights over the Green Wealth product. The Complainant has no right to question or object to the Respondent's business because both Parties are authorized distributors. This conflict between the Parties does not come within the ambit of the UDRP. page 4 6. Discussion and Findings 6.1 Preliminary Issue: Requests to make Supplementary Filings The Complainant requests an opportunity to make a supplemental filing to reply to the Response, in particular, the Respondent's failure to provide evidence indicating ownership of trademarks outside Thailand when it is marketing products in other parts of the world in violation of the Complainant's intellectual property rights. The Respondent requests an opportunity to reply to any supplemental filing by the Complainant. The Panel sees no reason to offer the Complainant an opportunity to reply to the Response. It was reasonably foreseeable at the time of filing the Complaint that the Respondent would raise the facts and arguments later set out in the Response. The identity of Green Wealth Global Co. Ltd and its relationship to Green Wealth Health Care Co. Ltd and Dr. Paiboon are disclosed on the website associated with the disputed domain name, which sells Neo Hair Lotion. The Complainant is familiar with Green Wealth Health Care Co. Ltd and Dr. Paiboon because they authorized the Complainant to distribute the same product. The Complainant chose not to address these facts and arguments in the Complaint. In any event, the Panel does not consider that this dispute falls within the scope of the Policy, for the reasons given in Section 6.2B below. Therefore, the Panel declines the Complainant's request for an opportunity to make a supplemental filing. Having declined that request, the Respondent's request for an opportunity to reply is moot. 6.2. Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark 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. Failure to prove any one of the above elements will result in denial of the Complaint. The burden of proof of each element is borne by the Complainant. A. Identical or Confusingly Similar Based on the evidence presented, the Panel finds that the Complainant has rights in the GREEN WEALTH mark, among others, in multiple jurisdictions. While the Respondent submits that the Complainant sought its trademark registrations in bad faith, the Panel takes note that those trademark registrations are current and that, therefore, the Complainant has rights in them. The disputed domain name wholly incorporates the GREEN WEALTH mark as its initial element. It adds the word "global" but this addition does not prevent a finding of confusing similarity because the GREEN WEALTH mark remains clearly recognizable within the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8. The only other element in the disputed domain name is the generic Top-Level Domain ("gTLD") ".com". As a standard requirement of domain name registration, this element may be disregarded in the comparison between a domain name and a trademark unless it has some impact beyond its technical function, which is not the case here. See WIPO Overview 3.0, section 1.11. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. page 5 B. Rights or Legitimate Interests, and Suitability of the Policy for this Dispute The disputed domain name resolves to a website offering for sale Neo Hair Lotion. The product packaging is basically the same as that of the Complainant's Neo Hair Lotion, although there are several subtle differences between them. Both display a GREEN WEALTH and device mark. It is not disputed that the Complainant has not authorized the Respondent to use its trademarks. The Complainant submits, in essence, that the Respondent is attempting to capitalize on the reputation of the Complainant's trademarks. The website associated with the disputed domain name is that of a Thai company named Green Wealth Global Co. Ltd. Although the Respondent is identified in the Registrar's WhoIs database as an individual, Suwanna Mayeux, the Respondent's contact address and telephone number in the WhoIs database match those of the company on the website and its registered office, although the contact email address does not. The Response refers to that company as the Respondent but was signed by Ms. Mayeux. In view of these circumstances, the Panel accepts that the Respondent is associated with Green Wealth Global Co. Ltd. According to evidence on record, Green Wealth Global Co. Ltd was incorporated on March 22, 2022, one week before the registration of the disputed domain name. The disputed domain name matches its name, omitting only its commercial status identifier. By a letter dated September 15, 2022, this company was authorized by Green Wealth Health Care Co. Ltd to serve as Thailand distribution center for Neo Hair [Lotion]. The authorization letter was signed by Dr. Paiboon as a director of Green Wealth Health Care Co. Ltd. Dr. Paiboon holds Thai trademark registration number 201113036 for a figurative mark featuring the words GREEN WEALTH, registered on June 8, 2020, specifying hair lotion in class 3. The disputed domain name wholly incorporates the textual element of that trademark, with the addition of the word "global" and a gTLD. According to evidence presented by the Complainant during its trademark opposition proceeding in India (and submitted by the Respondent in this UDRP proceeding), the Complainant was also authorized to distribute Neo Hair Lotion (in India) by "Green Wealth Health Care Limited" of Thailand, represented by Dr. Paiboon, under an agreement dated September 1, 2020. The Panel accepts that this company is Green Wealth Health Care Co. Ltd. According to evidence presented by the Complainant in support of its United States trademark applications (and submitted by the Respondent in this UDRP proceeding), the Complainant's product packaging shows that it is distributed by Green Wealth Health Care Co. Ltd and made in Thailand. Therefore, the Complainant and the Respondent's company, Green Wealth Global Co. Ltd, both appear to be authorized distributors of the same product in cooperation with the same company. The Panel takes note that the evidence of the Respondent's company's authorization to sell Neo Hair Lotion is limited to a Thailand distribution center. At the same time, its website is in English, it displays prices in many foreign currencies and it offers shipping worldwide. This all indicates that the Respondent is using its website to market products to consumers outside Thailand, including in jurisdictions where the Complainant has trademark rights. In view of the above circumstances, the disputed domain name is part of a wider and more complex dispute between two distributors, each with an authorization from the same company in different terms. The Panel recalls that the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy establishes a streamlined, inexpensive administrative dispute resolution procedure intended only for the relatively narrow class of cases of "abusive cybersquatting". The UDRP is not an appropriate process to adjudicate a complex business dispute such as this because the Panel does not have the benefit of witness testimony, disclosure of documents, or the other appropriate instruments that are typically available to assist a court to resolve such a dispute. See, for example, Symphony Holdings Limited v. Jaimie Fuller, Fuller Consultancy F.Z.E., WIPO Case No. D2019-2887. Therefore, the Panel will not consider the merits of the Complaint further, on the broad ground that this is a business dispute that exceeds the scope of the UDRP. The dispute would be more appropriately addressed by a court of competent jurisdiction, or perhaps in mediation or with the assistance of Green Wealth Health Care Co. Ltd. See WIPO Overview 3.0, section 4.14.6. page 6 The Respondent appears to allege that the Complaint was filed in bad faith or constitutes an abuse of this procedure. While the Panel has accepted that the Complaint could have anticipated the matters raised in the Response, its claims were not spurious and do not appear to have been made in bad faith. The fact that the Panel has found that this dispute falls outside the scope of the UDRP does not imply that it was an abuse of procedure. 7. Decision For the foregoing reasons, the Complaint is denied. /Matthew Kennedy/ Matthew Kennedy Sole Panelist Date: June 2, 2023
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