The Complainant is Abundant Health, LLC, United States of America (“United States”), represented by Workman Nydegger, United States.
The Respondent is C Hatziantoniou & R Hatziantoniou, Australia, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Web Address Registration Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2019. On June 13, 2019, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain name. On June 14, 2019, Web Address Registration Pty 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 June 24, 2019. On June 25, 2019, the Center received an email communication from the Respondent. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2019. As agreed between the Parties on June 12, 2019, the Response due date was extended to July 19, 2019. The Response was filed with the Center on July 19, 2019.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 9, 2019. 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 is in the business of providing products for use in connection with essential oils, including diffusers, cases, displays, bottles and the like.
According to the Complaint, the Complainant began using AROMA TOOLS as a trademark for its products in May 2008. It says it has been using the trademark around the world since that date. It is not in dispute between the Parties that the Complainant registered the domain name in July 2008. The Complainant, however, has not provided evidence showing the historical use or extent of its trademark.
The Complainant has provided evidence that it owns two registered trademarks for AROMATOOLS, simpliciter:
(a) Australian Trademark No. 1877301, which is registered for a range of goods and services in International Classes 16, 18, 21, 25, 35, and 41. This trademark was filed on and is registered from May 16, 2017;
(b) United States Trademark No. 5,581,677, which is also registered for a similar range of goods and services in International Classes 16, 18, 21, 25, 35, and 41. This trademark was filed on May 16, 2017 and registered on October 9, 2018. According to the Certificate of Registration, first use of the trademark in commerce was claimed from May 1, 2008 in respect of the Class 16 and Class 35 goods and services. The date of first use in commerce claimed for the Class 41 services was July 1, 2008; for the Class 18 goods, September 1, 2008; for the Class 21 goods, August 1, 2012; and for the Class 25 goods, September 1, 2014.
It appears that, prior to registering these trademarks, the Complainant also registered United States Trademark No. 4,971,519 for AROMA TOOLS and a device of two stylised green leaves with a blue drop. This trademark is registered in respect of “Aromatherapy accessories, namely, books featuring therapeutic use of essential oils, printed user guides on aromatherapy and plastic bags for packaging”. The exclusive use of the word “aroma” has been disclaimed. The application for this trademark was filed on January 29, 2015. It was registered on June 7, 2016. First use in commerce is claimed from July 1, 2008.
The disputed domain name was registered on May 8, 2016.
It resolves to a website titled “World Aroma Aromatherapy Tools & Oils” and “Aromatherapy Tools & Oils Australia”. The Respondent offers for sale a range of products similar to those offered by the Complainant from the website.
On the Respondent’s home page, the first element, “World Aroma Aromatherapy Tools & Oils” is presented against a white square in which the words are superimposed over a device featuring two green leaves. The word “Aroma” is in much larger type than the other words. The element “Aromatherapy Tools & Oils Australia” is presented in larger, shadowed lettering than the word “Aroma” in the “leaf device”. The phrase is against the homepage’s standard blue background. The block capital lettering is in white, apart from the word “Australia” which is presented in green, cursive script. The net effect of this presentation is that the “leaf device” appears to be a form of logo.
The Respondent registered the business name “Aroma Tools & Oils” on July 11, 2016. According to the Response, trading from the disputed domain name commenced on that date. The Respondent also registered the business name “World Aroma” on May 4, 2018.
Before registering the disputed domain name, the Respondent says she was selling products on eBay. The Response includes evidence of the current form of the Respondent’s eBay page, “World Aroma Tools Oils | worldaromatools”. This page has the same “leaf device” as the website to which the disputed domain name resolves. The form of the eBay store before the registration of the disputed domain name is not in evidence. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a name, 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 or subsequently used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that the Panel deems applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s name, trademark or service mark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for AROMATOOLS referred to in section 4 above.
Disregarding the Top-Level domain (“TLD”), “.” (which is permissible as it is a functional part of the domain name system (see, e.g., auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), section 1.2)), the disputed domain name is identical to the two registered trademarks the Complainant relies on.
The Respondent contends that the phrase “Aroma Tools” is generic, points out that the Complainant has proven ownership of the trademark in two countries only, but not elsewhere, and further contends that United States Registration No. 4,971,519 includes a disclaimer over “Aroma”.
The Respondent’s arguments are misplaced at this stage of the inquiry. On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s trademark: see for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001. In undertaking this comparison, the TLD suffixes such as “.” typically may be disregarded. The test, therefore, is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Accordingly, the Complainant has established the first requirement under the Policy. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the complainant. Previous auDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001.
The Complainant states that the Respondent is not licensed by or in any way associated with the Complainant and its business. Moreover, the Respondent is selling products directly in competition with the Complainant. These matters are sufficient to raise the required prima facie case.
As already noted, the Respondent contends that the term “Aroma Tools” is generic. The Respondent also points out that she registered the disputed domain name before the Complainant applied to register the two trademarks for AROMATOOLS simpliciter. As noted above, the Respondent appears to claim that she was also using the expression “Aroma Tools” on her eBay page before she registered the disputed domain name.
The Panel is unable to agree that the expression “Aroma Tools” is generic. First, both the Australian and United States Trademark Offices have registered the trademark. That is not necessarily conclusive, but the fact that both offices, which engage in substantive examination before acceptance for registration, have accepted the composite term is capable of distinguishing is significant.
The Respondent says the exact term “aroma tools” appears on over 150,000 third party web pages. This claim is not supported by evidence. The Panel’s own attempt to undertake a Google search using the composite phrase, either generally or using an exact match functionality, did not result in the claimed number. Moreover, the first pages of results returned links to either the Complainant or the Respondent or their products. In these circumstances, the Panel can give little weight to the claim that there are 150,000 independent users of the composite expression.
The Panel accepts that the individual words are certainly common or ordinary English words, but the composite term is not itself obviously descriptive. It is not included in standard dictionaries such as the Shorter Oxford English Dictionary or the Macquarie Dictionary. It is noteworthy that the Respondent’s business cards feature a logo consisting of three leaves over the words Aroma Tools & Oils, then in the middle of the card and by far the largest text “www.”. Then follows explanatory text:
“Aromatherapy Supplies and Essential oils
“-glass bottles
“-storage cases
“-diffusers
“-premixed ready to roll oils
“-Doterra Essential oils”
It appears to the Panel that the term “aromatherapy supplies” or, as on the Respondent’s website, “aromatherapy tools” are more likely to be the descriptive term for the products offered by the Complainant and the Respondent.
As there is no evidence of the Respondent’s eBay store before the disputed domain name was registered, the Panel is unable to accept it as demonstrating prior use. In this respect, the position under the Policy is the same as under the Uniform Domain Name Dispute Resolution Policy. 1 See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.2.
The fact that the Respondent has registered the business name, Aroma Tools & Oils, is also not conclusive. Registration of a business name is an obligation where a person is or proposes to carry on business under a name other than their own name. It does not confer rights in itself. See auDA auDRP Overview 1.0, section 2.7B.
The Respondent points out that the business name and the disputed domain name were registered before the Complainant filed the trademarks on which it relies. The fact that a respondent had registered a domain name before the complainant acquired the trademark rights on which it relied is usually a basis for finding that the respondent does have rights or legitimate interests in the domain name. See, e.g., auDA auDRP Overview 1.0, section 2.1A.
There are exceptions to that rule, however, especially where a respondent has adopted the domain name with knowledge of the complainant’s trademark or plans to adopt the trademark.
In the present case, the Respondent does challenge the Complainant’s claim to have been using AROMATOOLS since 2008, but in a limited way. First, the Respondent accepts that the Complainant has been using AROMATOOLS for its domain name, since 2008. Secondly, the Respondent appears to contend that the trademark the Complainant has been using (apart from the domain name) is the device registered in the form of United States Trademark No. 4,971,519; that is, the words “Aroma Tools” with the leaf device. The verbal element of Trademark No. 4,971,519 is not, as the Respondent appears to suggest, a minor or insignificant feature of that trademark and is the only feature of the trademark which could be registered as a domain name. See, e.g., WIPO Overview 3.0, section 1.10.
This is significant as under the Trade Marks Act 1995 (Cth), section 124 provides a defence based on prior use of a trademark not just where the defendant commenced using the trademark before the registration of the plaintiff’s trademark but also before the trademark owner commenced using the trademark.
In these circumstances, therefore, the Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name and the Respondent has not successfully rebutted that prima facie case.
Accordingly, the Complainant has established the second requirement under the Policy. C. Registered or Subsequently Used in Bad Faith
In contrast to the UDRP, the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy. That is, these requirements are disjunctive, not conjunctive as under the UDRP.
It is not in dispute that the Respondent uses the disputed domain name in connection with products not sourced from the Complainant and which are competitive with the Complainant’s products. In the absence of rights or legitimate interests in the disputed domain name, therefore, the Respondent is using the disputed domain name in bad faith under the Policy. See also auDA auDRP Overview 1.0, section 3.1.
Accordingly, the Complainant has established the third requirement under 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.
Warwick A. Rothnie
Sole Panelist
Date: August 23, 2019
1 Given the similarities between the Policy and the UDRP, the Panel cites UDRP decisions and other UDRP jurisprudence when appropriate.
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