The Complainant is ESPA International (UK) Limited, ESPA House of Surrey, United Kingdom of Great Britain and Northern Ireland, represented by Davies Collison Cave, Australia.
The Respondent is Espa of Australia Pty Ltd., Carol Fleming of Wonga, Queensland, Australia. 2. The Domain Name(s) and Registrar(s)
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2011. On March 17, 2011, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On March 18, 2011,Melbourne IT Ltd 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2011. The Response was filed with the Center on April 12, 2011. The Complainant made a supplementary filing on April 21, 2011 which the respondent challenged by its e-mail of May 1, 2011.
The Center appointed Alistair Payne as the sole panelist in this matter on May 3, 2011. 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 has since 1993 designed operated and developed five star spas and sold various spa products in countries around the world. It owns registered trade marks in numerous countries including 3 registrations for the word mark ESPA in Australia under registration numbers 779946, 1054607 and 135509. It also owns an Australian trade mark registration E’SPA device mark under registration number 779947. The Complainant operates over seventy domain names containing the ESPA mark including and .
The Respondent commenced operations in 1993 as Exclusive Spas Of Australia Pty Ltd and operates a luxury spa at Palm Cove in Queensland and a spa consulting business. It is one of a group of companies which operates spa facilities at three locations in Queensland under the ultimate ownership of Mr. and Mrs. Fleming. 5. Parties’ Contentions A. Complainant
The Complainant submits that its ESPA mark is well reputed and has developed very significant reputation in many countries and in the spa industry and that its products under the ESPA mark are used and promoted in a hotel in Western Australia. It says that the Disputed Domain Name is identical to its trade mark registrations incorporating the ESPA mark.
The Complainant says that its use of the ESPA trade mark pre-dates the Respondent’s use and that it has never authorized the Respondent to use its mark. It submits that the Respondent does not currently use ESPA as its trade mark or trade name and that the mark is not reflected in its current corporate name nor in the manner in which the Respondent describes itself on its website, namely as “Exclusive Spas Australia”. The Complainant says that the Respondent’s use of ESPA cannot be explained as a contraction of this trading name and that when the Respondent originally did use the ESPA mark it did so in bad faith. Further, the Complainant says that the Respondent only started to make use of the Disputed Domain Name to point to a website after receiving a complaint letter from the Complainant in 2005 and such use cannot therefore constitute bona fide use or a legitimate interest.
As far as bad faith registration is concerned the Complainant says that its business and ESPA mark is very well known internationally and in Australia in the spa industry and has been widely written about in magazines with international circulation which are available in Australia. The Complainant says that the Respondent as a long standing operator of luxury spas, having itself been recognized in magazines such as Conde Nast and Vogue must have been aware of the Complainant’s ESPA mark when it registered the Disputed Domain Name on 24 November, 2004. The Complainant points out that various magazines in which the Respondent was featured prior to this date also contained references, articles or sponsorship by the Complainant under its ESPA mark.
The Complainant suggests that the Respondent purposefully changed its name from “Daintree Spa Queensland” or “ Daintree Spa Australia” to “ESPA of Australia” to take advantage of the reputation attaching to the Complainant’s mark and that the Respondent also attempted to appropriate the Complainant’s “E’SPA” version of the mark at that time as can be seen in various magazine articles and media releases about the Respondent’s business. The Complainant submits that none of this is consistent with registration or use of the Disputed Domain Name in good faith.
The Complainant says that evidence of the Respondent’s use in bad faith is only compounded by the Respondent’s continued use of the Disputed Domain Name even after the trade mark dispute between the parties in 2005 and the agreed settlement in which the Respondent agreed inter alia to remove all references to the ESPA mark from its website. The Respondent’s subsequent use of the Disputed Domain Name to point to its website only after receiving notice of the Complainant’s rights in May 2005 is consistent, according to the Complainant with the Respondent having registered and having sought to use the Disputed Domain Name in bad faith. B. Respondent
The Respondent says that its spa businesses are well known in Australia having been both well publicised and recognized by a range of industry awards over the last seven years. The Respondent says that as a consequence the Disputed Domain Name has developed a considerable value for its business.
The Respondent submits that at the time of registration of the Disputed Domain Name it had no knowledge of the Complainant’s ESPA trade mark and no knowledge of the Complainant and that the Complainant did not and does not now operate in Australia. The Respondent says that in 1993 the spa industry was in its infancy and that it was focused on its local market and had no reason to look overseas at other operations.
It submits that its searches at that time showed that corresponding domain names were owned by a number of entities operating in very different sectors unrelated to the spa industry. It says that it chose to use the initials ESPA because this was an acronym for the name of the company at the time, being Exclusive Spas of Australia and that it is commonly known by this acronym.
The Respondent submits that it made bona fide preparations to launch its website at the Disputed Domain Name prior to the trade mark dispute between the parties in 2005 and accordingly acted in good faith. Further it says that it is in a different market from the Complainant, not only geographically but also sectorally as it provides on-site spa services and is not focused on providing spa consultancy services. It says that there is no mention of ESPA on its website and that people visiting the site would not consider that it had any association with the Complainant. As a consequence it neither registered nor has it used the Disputed Domain Name in bad faith. 6. Discussion and Findings
The Panel finds that the Complainant’s supplemental filing concerns issues raised in the Response that it could not have been aware of at the time of filing the Complaint and that accordingly it is appropriate to admit the supplemental filing. A. Identical or Confusingly Similar
The Panel finds that the Complainant has demonstrated registered trade mark rights in its ESPA trade mark as set out above and that the key element of the Disputed Domain Name, namely the term “ESPA” is identical to the Complainant’s trade mark. As a result the Complaint succeeds in relation to the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy the Complainant is required to make out at least a prima facie case that the Respondent has no legitimate right or interest in the Disputed Domain Name and it is then for the Respondent to rebut this case.
Essentially the Complainant says that the Respondent could not have been unaware of the Complainant’s ESPA mark at the date of registration of the Disputed Domain Name. Based on a number of circumstances including its change of corporate names and conduct following the trade mark dispute with the Complainant, it can be inferred that the Respondent chose the Disputed Domain Name purposefully in order to take advantage of the reputation and renown attaching to the ESPA mark. The Respondent on the other hand says that it was unaware of the Complainant at the date of registration and chose the Disputed Domain Name because it is an acronym of its corporate name and that at the time of the trade mark dispute between the parties it had already made bona fide preparations to launch its website and is not in any event in competition with the Complainant.
The Panel is not persuaded by the Respondent’s explanation. Although, had all other things been equal it might have been able to argue that it had a legitimate interest in ESPA as a somewhat loose acronym of the Exclusive Spas Australia name, in the Panel’s view the circumstances indicate otherwise. At the end of the day and as set out below, the circumstances suggest to the Panel that the Respondent sought to take some advantage of the Complainant’s reputation or goodwill by using a domain name containing the ESPA mark.
Firstly, there is strong evidence that the Complainant has developed a substantial international reputation, at the least in the spa industry and it would therefore seem surprising if the directors of the Respondent who were very much involved in that industry had not been aware of the Complainant and its ESPA mark by November 2004. Secondly, it is not credible for the Respondent to deny all knowledge of the Complainant prior to the 2005 trade mark dispute with the Complainant in circumstances that the Respondent’s spa operations were mentioned or featured in various editions of Conde Nast Traveller magazine, which editions were either sponsored by the Complainant or featured articles about the Complainant. It is notable also that at least one of these editions featured the Complainant’s E’SPA logo on the front page and that the Respondent also appears to have made use of a similar logo. Thirdly, it appears that the Respondent only chose to direct the Disputed Domain Name to its website after being notified of the Complainant’s rights in the course of the 2005 trade mark dispute with the Complainant. The fact that the Respondent says that it had already made preparations to do this prior to the trade mark dispute, but still proceeded to use the Disputed Domain Name in this way after having agreed to cease use of the ESPA mark only reinforces the Panel’s view that the Respondent did not act in good faith and therefore cannot be said to have a legitimate right or interest in the Disputed Domain Name.
Accordingly, the Complaint succeeds in relation to the second element of the Policy. C. Registered or Subsequently Used in Bad Faith
Under the .au DRP it is only necessary for the Complainant to demonstrate either registration, or use, in bad faith and not both at the same time.
Based on the reputation of the Complainant in the international spa industry and on the references to it and to its ESPA word mark and E’SPA logo mark in magazines in which the Respondent also featured prior to the date of registration of the Disputed Domain Name, the Panel infers that on the balance of probabilities the Respondent must have been aware of the Complainant’s ESPA word mark prior to registration of the Disputed Domain Name. Although one explanation for its choice of domain name is that the term “ESPA” is an acronym for Exclusive Spas of Australia, it is apparent as the Complainant submits, that the more natural acronym would be ESA. In addition the timing of the Respondent’s change of its name from “Exclusive Spas of Australia” to “Daintree Spa Queensland” or “Daintree Spa Australia” and then to “ESPA of Australia” in September 2003 and its later use of the term “E’SPA” in marketing materials is indicative in the Panel’s view that Respondent was intentionally attempting to create some association with the Complainant’s marks and is at the least consistent with the view that the Disputed Domain Name was registered with knowledge.
As far as use is concerned, the Panel notes as set out above at section B, the Respondent’s apparent choice to only direct the Disputed Domain Name to its website following receipt of the Complainant’s trade mark complaint in the course of the original trade mark dispute between the parties. Whether the terms of the subsequent agreement between the parties precisely extended to cover use of ESPA as part of a specified domain name or not is irrelevant, the point being that the Respondent was by that time all too well aware of the Complainant’s trade mark rights but purposefully chose to direct the Disputed Domain Name to its website with the apparent aim of creating some degree of association with the Complainant in the minds of internet users. As a result, the Panel finds that the Disputed Domain Name was also used by the Respondent in bad faith.
Accordingly the Complaint succeeds under the third element of the Policy. 7. Decision
For all 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.
Alistair Payne
Sole Panelist
Dated: May 17, 2011
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