The Complainant is Rejuvatek Medical, Inc. of Sandy, Utah, United States of America (“United States” or “US”), represented by Chrysiliou IP, Australia.
The Respondent is Biosoft (Aust) Pty Ltd of Silverwater, Australia. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with VentralP Group (Australia) Pty Ltd dba VentralP Wholesale (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2017. On May 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 29, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. The Complainant filed an amendment to the Complaint on May 31, 2017.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), 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 May 31, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2017.
The Center appointed John Swinson as the sole panelist in this matter on June 28, 2017. 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 specializes in the development of natural tattoo removal options and is the manufacturer of the Tatt2Away Tattoo Removal system.
The Complainant is the owner of United States trade mark registration no. 3923894 for TATT2AWAY (the “Trade Mark”) which was registered on September 25, 2009. The Complainant also owns a corresponding Australian trade mark registration (registration no. 1488355) which was filed on May 1, 2012.
The Complainant entered a distribution agreement with an Australian company, EquipMed, on January 20, 2012, for a period of three years (“Distribution Agreement”). The Distribution Agreement expired on January 20, 2015.
The Respondent was not a party to the Distribution Agreement and has never had a direct contractual relationship with the Complainant. The Respondent is however, said to be, a related entity to EquipMed. As discussed below, the Complainant has provided sufficient evidence to satisfy the Panel of this relationship.
On February 24, 2012, in the month following the execution of the Distribution Agreement, the Respondent registered the Disputed Domain Name.
In April 2012, the parties to the Distribution Agreement had a heated email exchange after the Complainant became aware of EquipMed’s attempt to register the Trade Mark in Australia. An authorized officer of EquipMed had attempted to register the Trade Mark in the Respondent’s name. The Complainant disputed this registration on the grounds that it breached the Distribution Agreement and EquipMed withdrew its trade mark registration application. It appears that the Complainant then promptly filed the Australian registration for the Trade Mark on May 1, 2012, following this dispute.
In 2015, following the expiry of the Distribution Agreement, the Complainant contacted EquipMed over email to remind EquipMed that the Distribution Agreement had expired and that use of the Trade Mark, along with the promotion of any association between EquipMed and the Complainant, was to cease. Formal legal letters were then sent to both the Respondent and EquipMed by the patent and trade mark attorneys acting for the Complainant. The Complainant asked both companies to transfer or cancel the Disputed Domain Name given the Respondent’s continued, and now unauthorized, use of the Trade Mark and misleading statements on the website at the Disputed Domain Name in relation to the relationship between the parties. The letter to EquipMed stated that while the Distribution Agreement provided consent to use the Trade Mark as well as other intellectual property owned by the Complainant throughout the term of the agreement, the agreement had expired and EquipMed had no rights to continue using the Trade Mark.
While EquipMed had rights to use the Trade Mark up until the expiry of the Distribution Agreement, the Complainant has never granted the Respondent authority of any kind to use the Trade Mark.
The website at the Disputed Domain Name (“Respondent Website”) is currently active and uses the Trade Mark extensively throughout. The Respondent Website still refers to the Complainant and states that “EquipMed is pleased to be partnering with [the Complainant] as the sole Australian distributor of Tatt2Away”, which the Complainant states is no longer correct. In addition, the phone number on the Respondent Website redirects to a competitor company, which is subsidiary of EquipMed. 5. Parties’ Contentions A. Complainant
Identical or confusingly similar
The Complainant submits that the Disputed Domain Name is confusingly similar to the Trade Mark given that the Trade Mark is included in entirety. The only difference is the inclusion of the word Australia, which, as a geographical reference, does not differentiate the Disputed Domain Name from the Trade Mark and the “.” ccTLD.
The Respondent Website uses the Trade Mark extensively in relation to tattoo removal services. The Complainant submits that the Respondent’s unauthorized use of the Trade Mark is intended to mislead Internet users into believing there is an association between the Respondent Website and the Complainant for the ultimate purpose of commercial gain.
Rights or legitimate interests
The Complainant submits that the Respondent has no legitimate connection to the Disputed Domain Name and is unable to demonstrate a bona fide offering of goods and services.
The Complainant explains and provides evidence to support the relationship between the Respondent and its former Australian distributor, EquipMed. Irrespective of this, the Complainant repeatedly highlights that at no stage have they entered into any form of agreement with the Respondent or provided the Respondent with authority to use their Trade Mark or to indicate any form of affiliation with the Complainant.
The Complainant’s position, as articulated through legal letters sent to the Respondent and EquipMed following expiry of the Distribution Agreement, is that the agreement provided consent to use the Trade Mark during the Distribution Agreement however this agreement has now expired and, as such, so have any rights to use the Trade Mark.
Registration and use in bad faith
The Complainant submits that the Respondent is using the Respondent Website to attract Internet users to its website by capitalizing on likely confusion with the Complainant’s Trade Mark for the primary purpose of commercial gain.
The Complainant also highlights that the Respondent Website is misleading Internet users by incorrectly stating that there is an official relationship with the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must prove that each of the elements provided in paragraph 4(a) of the Policy have been met. These include:
(i) the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has 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 or subsequently used in bad faith.
Irrespective of the fact the Respondent has not filed a response, the onus of proving these elements remains on the Complainant. A. Procedural Issues
No response from the Respondent
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059)1 . However, the Panel may draw appropriate inferences from the Respondent’s default. B. 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 a name, trade mark or service mark in which the Complainant has rights.
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Trade Mark is included entirely in the Disputed Domain Name and the inclusion of the geographical term “Australia” and the Top-Level Domain “.” does nothing to detract from this similarity.
The Complainant is successful on the first element of the Policy. C. 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. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
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).
For a three-year period from January 20, 2012, EquipMed, a related entity of the Respondent, was an authorized distributor of the Complainant’s products and had permission to use the Trade Mark under the Distribution Agreement.
Based on information provided in the case file, it appears the Complainant was aware that the Disputed Domain Name had been registered and was being used to promote the Tatt2Away product during the course of the Distribution Agreement. It is not clear when the Complainant became aware of this, or whether the registration was expressly authorized or the Complainant simply acquiesced to its registration and use. The Complainant states in the Complaint that it has never given the Respondent (as opposed to EquipMed) permission to use the Trade Mark (and so presumably, to register the Disputed Domain Name). However, the Complainant has not provided evidence that it had raised this issue with the Respondent or EquipMed prior to the expiry of the Distribution Agreement in 2015, nor did it make this argument when it wrote to the Respondent in 2015 requesting the transfer or cancellation of the Disputed Domain Name.
In any case, the Complainant has provided evidence that the Distribution Agreement is no longer in force, and numerous attempts have been made to convince the Respondent and EquipMed to cease using the Trade Mark and promoting any relationship with the Complainant.
The question of whether or not the Respondent has rights or legitimate interests in the Disputed Domain Name is determined at the time the Complaint is filed. Given the Distribution Agreement is no longer in force, and the Complainant has made it clear neither EquipMed nor the Respondent has permission to continue using the Disputed Domain Name, it is evident that the Respondent currently has no rights or legitimate interest in the Disputed Domain Name. The panel in ESET, spol. s.r.o. v. Antivirus Australia PTY Ltd., Rodney Fewster, ESET Pty Ltd.,WIPO Case No. DAU2015-0014, which involved continued use of a domain name following termination of a distribution agreement, came to a similar decision. (Also see, e.g., SPECS GmbH v. SPECS Scientific Instruments Inc. d/b/a. SPECS Technologies Corporation,WIPO Case No. D2009-0308 and the cases cited therein, and Jerome Stevens Pharmaceuticals, Inc. v. Watson Pharmaceuticals,WIPO Case No. D2003-1029, and this Panel’s decision in Pangaea Laboratories Ltd, Pacific Direct Intertrading Pty Ltd v. Astrix Pty Ltd,WIPO Case No. DAU2015-0013).
In the interest of certainty, the Panel has also given consideration to the panel’s decision in 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. The panel in Oki Data stated that a reseller or distributor (and particularly an authorized 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.
The Oki Data principles have been extended to apply to resellers who do not have a contractual relationship with a trade mark owner, so can be applied to the Respondent in these circumstances (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).
As stated in Pangaea Laboratories Ltd, Pacific Direct Intertrading Pty Ltd v. Astrix Pty Ltd, supra, Oki Data is an exception to a general rule. The general rule is that it is 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. If the Disputed Domain Name was registered with the authorization or acquiescence of the Complainant, the Respondent has no rights or legitimate interests today as that authorization expired with the expiry of the Distribution Agreement. In any event, the Respondent does not meet Oki Data, even if the Distribution Agreement was not expired.
As stated above, the examination of whether or not the Respondent has rights or legitimate interests in the Disputed Domain Name is determined at the time the Complaint is filed. Based on the evidence provided by the Complainant, the Respondent’s use of the Disputed Domain Name did not meet the second and third elements of the Oki Data test for the following reasons:
- A phone number promoted on the Respondent Website connects to a competitor’s company. The Panel finds that it is possible that the Respondent is using the Trade Mark in the Disputed Domain Name to attract customers with the intention of redirecting them elsewhere.
- The Respondent has not accurately depicted its relationship with the Complainant, the owner of the Trade Mark, and has included a statement on the Respondent Website which gives the impression that EquipMed (the Respondent’s related entity) is the sole Australian distributor of the Complainant’s product, which is no longer correct.
For the reasons set out above, and with no evidence from the Respondent to the contrary, the Panel finds that the Complainant is successful on the second element of the Policy. D. Registered or Subsequently Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered or subsequently used the Disputed Domain Name in bad faith.
The Panel accepts that there is a close relationship between EquipMed and the Respondent as outlined above.
The Panel is unclear as to whether the Distribution Agreement between the Complainant and EquipMed expressly allowed or restricted the registration of the Disputed Domain Name, although it appears that the Complainant was accepting of EquipMed’s use of the Trade Mark throughout the term of the agreement.
While this makes it difficult to determine whether the Disputed Domain Name was registered in bad faith, under the Policy, the Complainant is only required to prove that it was registered or subsequently used in bad faith to satisfy this element.
Given the Complainant’s strong opposition to EquipMed’s attempt to register the Trade Mark in Australia (following its US registration) and repeated attempts following the expiry of the Distribution Agreement to have the Respondent and EquipMed cease using the Trade Mark and Disputed Domain Name, the Panel is satisfied that, at least following the expiry of the Distribution Agreement, the Disputed Domain Name has been used in bad faith. This view is strengthened by the fact that the phone number on the Respondent Website directs callers to a product which competes with the Tatt2Away product, and does not accurately identify the Respondent’s relationship with the Complainant.
It is possible that the Respondent intended to capitalise on Internet users’ confusion and likely misconception that the Respondent (or EquipMed) was still a distributor of, or at the very least associated with, the Complainant’s product.
In summary, even if the Disputed Domain Name was registered legitimately when EquipMed was the registered distributor, the Distribution Agreement expired in 2015 and both Equipment and the Respondent have been expressly informed by lawyers acting on behalf of the Complainant that they do not have permission to the use the Trade Mark or the Disputed Domain Name or to promote a non-existent distribution relationship.
In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on 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 domain name be transferred to the Complainant.
John Swinson
Sole Panelist
Date: July 12, 2017
1 In light of the substantive and procedural similarities between the auDRP and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has cited authorities decided under the UDRP where appropriate.
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