Complainant is Spa Esprit Group Franchise Pte Ltd of Singapore, Singapore, represented by Dechert LLP, United Kingdom of Great Britain and Northern Ireland.
Respondent is Nick Popat of London, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2010. On August 30, 2010, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Domain Name. On August 31, 2010, 1&1 Internet AG transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed two amendments to the Complaint on September 1, 2010. The Center verified that the Complaint together with the amendments to the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2010. The Response was filed with the Center on September 23, 2010.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on October 1, 2010. 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.
On October 4, 2010, the Center forwarded to the Panel an email from United States Counsel acting for Respondent reading as follows:
“I have just been retained to defend the Respondent in this action. He does not appear to have copies of the Complaint, and have been somewhat uncertain of what procedures to follow. Because I do not know when the Complaint was served, I would ask you to forward me the Complaint as soon as possible.”
On October 11, 2010 the Panel replied to the Center as follows:
“The Panel has no objection to the Center sending [counsel] a copy of the Complaint, however since it is obvious that Respondent did receive the Complaint and filed a Response to it there is no basis upon which the Panel should entertain any request for further time or other action.”
On October 12, 2010, Counsel for Respondent filed a further Response under cover of an email reading as follows:
“Thank you for forwarding the Complaint to my office. While I realize the attached Response is belated, I hope that the Panel will take into consideration the fact it was filed with the Mediation Center almost immediately upon receipt of the Complaint, which was not timely received by the Respondent to the best of his knowledge. With that in mind, the Respondent would like to submit the attached Response via counsel for the Panel's consideration.”
Paragraph 10(c) of the Rules empowers the Panel to extend a period of time fixed by the Rules, but only in exceptional circumstances. The same Rule requires the Panel to ensure that the proceeding takes place with due expedition.
It is clear from the record that Respondent received a copy of the Complaint and that he filed a Response on September 23, 2010 after requesting, and obtaining, from the Center a one day extension of time. In the Response, Respondent states that he received Notification of Complaint and Commencement of Proceedings on September 14, 2010 and that a copy of the Response was sent to Complainant on September 23, 2010.
No exceptional circumstances have been made out and there is no basis upon which the Panel can accept the proposed further Response filed on October 12, 2010, either as a late filing or as a supplemental filing.
On October 13, 2010 Complainant filed a Supplementary Response in reply to the proposed further Response. In view of the Panel’s above ruling it is unnecessary to consider the Supplemental Filing.
The Panel therefore proceeds to its determination on the basis of the Complaint and the Response filed on September 23, 2010. 4. Factual Background
The Domain Name was registered on July 21, 2010.
Complainant is part of the Spa Espirit group of companies (“the Group”) which has been operating a waxing business under the name “Strip” since 2001. It claims to be the biggest waxing salon chain in the world. It presently operates 27 waxing salons including salons in London, Singapore, New York, Shanghai, Bangkok, Hong Kong, Jakarta, Manila and Kuala Lumpur. It opened a waxing salon in London in July 2009 and proposes to open a second salon in Covent Garden in London later this year. It operates a website at “www..uk” and “www.m”, both registered on July 23, 2009. Complainant exhibits printouts from the web pages at those domain names, all of which prominently feature the name “Ministry of Waxing”. In August/September 2009 the opening of the Group's London salon was heavily promoted and advertised in the London press by reference to the name and trademark MINISTRY OF WAXING. Promotions featuring the trademark appeared in Daily C, Metro Paper, London Life, Harpers Bazaar, Brides, Company, T, Times Online, International Life, The London W, Elle, The Daily Express and other physical and online publications.
Complainant is the registered owner of two European Community trademarks comprising respectively the words “Ministry of Waxing” and “Ministry of Waxing” and design dated August 28, 2009 and December 14, 2009 respectively.
The information known about Respondent is that he has a London address. It may be implied from his Response that he is associated with a business which is in competition with Complainant.
The disputed Domain Name resolves to a pay-per-click website on which he has provided a number of links to third party websites including websites which appear to be competitive with Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends that the Domain Name is identical to its trademark and that the addition of the suffix ".co" is irrelevant for the purpose of comparing the Domain Name with the trademark.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. In support of this contention it points to the fact that the Domain Name was registered a year after Complainant commenced its London operation. It contends that Respondent lives less than a minute away from Complainant’s London salon and that having regard to the extensive publicity surrounding the opening of that salon it is incredulous to suggest that Respondent was not aware of Complainant and its rights in the trademark when registering the Domain Name. Complainant asserts that it has not licensed or otherwise permitted or authorized Respondent to use the trademark or to incorporate it into a domain name. Respondent is not commonly known by the trademark.
With regard to Respondent’s use of the Domain Name to resolve to a portal website Complainant contends that this is not a use of the Domain Name in connection with a bona fide offering of goods or services, and cites a number of prior decisions under the Policy in support of its contention that such use is neither use in connection with a bona fide offering of goods or services nor a legitimate noncommercial use of the Domain Name.
Complainant also contends that the Domain Name was registered and is being used in bad faith. It contends that the only feasible possibility is that Respondent registered the Domain Name in order to unfairly benefit from Complainant’s rights and that he is operating the Domain Name intentionally to attract users to his website for commercial gain by creating a likelihood of confusion with Complainant's mark. Complainant further contends that the Domain Name has been used in a way that is likely to dilute the reputation of the trademark. It says that the mere registration of the Domain Name dilutes the uniqueness of the trademark as a guarantee of origin of the services provided by Complainant. B. Respondent
The Response comprises a reproduction of the model response available at the WIPO website. The only substantive part of the Response, apart from the bibliographic and other data and the statements above referred to in respect of the receipt of the Complaint and the service of the Response on Complainant, comprises the following statement:
“At the time of registration, the domain name was available and therefore registered. This is not hijacking but simply open market competitive behaviour! The complainant has previously poached our staff and clients and therefore is the domain name is available, then we are entitled to register. Furthermore, this domain name has been registered for a limited company set up in the Channel Islands. There is no evidence of a globally comprehensive trademark.” 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant is the registered owner of two European Community Trademarks and has demonstrated substantial publicities for the trademark surrounding the opening of the Group’s London salon. The Panel accepts Complainant’s contention, now universally recognized among panelists, that the addition of the necessary TLD does not serve to distinguish the domain name from the trademark which it incorporates. The Panel therefore finds that the disputed Domain Name is substantially identical to the trademark. B. Rights or Legitimate Interests
The Panel accepts Complainant’s assertion that it has not licensed or otherwise authorized Respondent to use the trademark in a domain name or otherwise.
The evidence of the proximity of Respondent’s address to Complainant’s London salon and the substantial publicity surrounding the opening of that salon in August/September 2009 leads to the inevitable conclusion that Respondent was aware of Complainant and its trademark and the reputation which had been built around it when he registered the Domain Name in July 2010. Respondent in his Response does not attempt to rebut Complainant’s contention but merely states that “[a]t the time of registration, the domain name was available and therefore registered”. The inevitable conclusion is therefore that Respondent, being fully aware of the rights and reputation of Complainant, opportunistically registered the disputed Domain Name following the expiration of the Sunrise period for the “.co” domain.
As to Respondent’s use of the Domain Name to direct to a pay-per-click webpage, in light of the facts and circumstances discussed above it cannot be accepted that this use constitutes a bona fide use of the Domain Name in the offering of goods or services. As stated in the case of Steelcase Development Corporation v. Manila Industries, Inc., WIPO Case No. D2006-1378, cited by Complainant:
“Here, [r]espondent has not used the domain name in connection with a bona fide offering of goods or services. Instead it has used the domain name to host a web page containing links to various commercial sites, including links to sites offering products in competition with [c]omplainant’s products.”
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
For reasons set out under paragraph B above the Panel also concludes that the Domain Name was registered and is being used in bad faith. Complainant’s trademark is a fanciful and distinctive illusion to the service to which it offers. The only reasonable conclusion which can be drawn from Respondent's adoption of the Domain Name is that it did so in full knowledge of Complainant’s rights and reputation, and with the intention of riding on that reputation to create confusion and attract Internet users to its website at the Domain Name for commercial gain, bringing it within paragraph 4(b)(iv) of the Policy. In addition, Respondent’s statement that Complainant “has previously poached our staff and clients and therefore is (sic) the domain name is available, then we are entitled to register” suggests that Respondent is in some way in competition with Complainant and that the registration of the Domain Name was for the purpose of disrupting Complainant’s business.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith. 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 Complainant.
Desmond J. Ryan AM
Sole Panelist
Dated: October 14, 2010
Full & Egal Universal Law Academy