The Complainant is House Doctor ApS., Denmark, represented by Patrade A/S, Denmark.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf / Yousseff Ali, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2021. On December 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2022, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on January 4, 2022, 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 January 7, 2022.
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 January 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2022.
On January 23, 2022, the Respondent requested an extension of time due to exceptional circumstances. On February 10, 2022, the Respondent requested a further extension of time to allow receipt of some historical records from a third party. The Response was submitted on February 14, 2022.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 23, 2022. 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 BackgroundThe Complainant is incorporated in Denmark. According to the Complaint, it trades in a range of consumer goods: primarily within the fields of interior design and decorations, household products, bathroom and kitchen articles, and foodstuffs. The Complainant also trades under the name Society of Lifestyle and has several other brands.
The Complainant has a number of registered trademarks for MERAKI in Australia, Canada, China, the European Union, the United Kingdom, India, Japan, South Korea, Norway, the Russian Federation, and the United States of America. For present purposes, it is sufficient to note the registrations in the United Kingdom and the European Union, all of which date from 2016:
(1) United Kingdom Registered Trademark No. UK00915312804 registered on July 25, 2016 with effect from April 6, 2016 in International Classes 3, 4, 8, 21, and 24;
(2) United Kingdom Registered Trademark No. UK00915887714 registered on February 3, 2017 with effect from October 5, 2016 in International Classes 3, 4, 8, 18, 21, 24, and 35;
(3) European Union Trademark No. 015312804 registered with effect from April 6, 2016 in International Classes 3, 4, 8, 18, 21, and 24; and,
(4) European Union Trademark No. 015887714 registered with effect from October 5, 2016 in International Classes 3, 4, 8, 18, 21, 24, and 35.
The services specified in International Class 35 in the United Kingdom registration are:
“Retailing and wholesaling, including online, in relation to sale of non-medicated body, face and hair care preparations and equipment, candles for lighting, callus rasps, nail files, nail clippers, hot water bottles, toiletry bags, cosmetic purses, mirrors, household utensils, textile goods; provision of an online marketplace for buyers and sellers of goods and services.”
The goods specified in the various classes include a range of soaps, cosmetics, body sprays, lotions, creams and shampoos and Candles for lighting; Perfumed candles, Callus rasps; Nail nippers; Nail clippers; Nail files, Toiletry bags; Cosmetic purses; Make-up bags sold empty, Dishwashing brushes; Dishcloths for washing dishes; Soap dispensers; Hairbrushes; Nail brushes; Brushes; Brushes for personal hygiene; Hairbrushes; Toilet cases; Facial cleansing sponges; Scouring sponges; Body scrubbing puffs; Abrasive sponges for scrubbing the skin; Cleaning rags; Wash cloths; Bath mitts; Face cloths of towelling; Face towels of textile; Face flannels in the form of gloves; Hand towels; Bath sheets; Bath towels; Face cloths; Towels of textile; Hand towels of textile; Dish towels for drying; Dish cloths of textile for drying.
It appears from Annex 4 included in the Response that the Complainant advertises a range of hair and skin care products under the sign “Meraki” from its website.
The disputed domain name was first registered on March 25, 2018. The Respondent has submitted evidence demonstrating he became the registrant at that time.
According to the Response, the Respondent is a supplier of various furniture fittings, furnishings, and decorative household accessories. At the time the Complaint was filed, the disputed domain name resolved to a website appearing to offer for sale metal hardware fittings such as door handles, knobs and handles for draws, and other such items. It appears that in 2018 the Respondent was selling a more eclectic range of goods including clothing as well as some metal products.
On June 14, 2021, the Respondent applied to register MERAKI as a trademark in the United Kingdom. This application was successful and has been registered as United Kingdom Registered Trademark No. UK00003654996 on November 12, 2021. It is registered in respect of:
(a) “Metal hardware; Door hardware (Metal -);Hooks [metal hardware];Hardware of metal, small; Small items of metal hardware; Architectural hardware made of common metals and alloys thereof.” In International Class 6;
b) “Drapery hardware; Drawer slides [furniture hardware]” in International Class 20; and
(c) “Wholesale services in relation to metal hardware; Retail services in relation to metal hardware” In International Class 35.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
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 it deems applicable.
A. Identical or Confusingly SimilarThe first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the registered trademarks referred to in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard acountry code Top –Level-Domain (ccTLD) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.co” ccTLD, the disputed domain name consists of the Complainant’s registered trademark and the term “shop” added as a prefix. The addition of such a term does not preclude a finding of confusing similarity. See e.g., WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate InterestsThe 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 can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] 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. 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. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
The Respondent registered the disputed domain name after the Complainant had registered its trademark and also after the Complainant began using its trademark.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is not derived from the Respondent’s name.
The Respondent, however, does have an associated company (the owner of the registered trademark), Meraki, Hardware Ltd. The record does not indicate when that company was incorporated or under what name. The Respondent does seek to rely, however, on the use of the name and the disputed domain name since 2018 for the purposes of paragraph 4(c)(ii) of the Policy.
That use commenced after the Complainant’s use and registration, however, and, so far as the record in this case reveals, “meraki” does not appear to have any meaning. It appears to be a fancy or distinctive word at least in relation to the goods and services the parties to this proceeding supply. In those circumstances, the Respondent’s failure to explain how he derived the name and when his company became incorporated under its name means the Panel would not accept that purported justification.
On the other hand, the Respondent (through his company) does have a registered trademark in the United Kingdom for “MERAKI”. That registration appears to cover the commercial activities being conducted from the website to which the disputed domain name resolves.
Under the United Kingdom’s Trade Marks Act 1994, section 11 provides that use of a registered trademark does not infringe an earlier registered trademark. There is an exception to this defence where it is shown that the registration of the later trademark would be declared invalid.
While the Complainant does point out that a respondent’s ownership of a registered trademark does not always lead to a finding of rights or legitimate interests, the Respondent contends that the goods and services covered by the Respondent’s registration involve a different field of commercial activity to the Complainant’s under the “Meraki” trademark.
The Panel’s impression on the limited record in this proceeding is the Respondent’s submission is not so clearly wrong that the registration of the trademark and the defence provided by section 11 of the Trade Marks Act 1994 (UK) can confidently be disregarded. See e.g., WIPO Overview 3.0, section 2.12.
Accordingly, the Panel finds that the Complainant has failed to establish that the Respondent does not have rights or legitimate interests in the disputed domain name.
Moreover, given the Parties’ trademark registrations, the Panel considers that this matter is more appropriately addressed in a court of competent jurisdiction. Notably in this regard, the Panel observes that there is no evidence in the case file that the Complainant has sought to invalidate the Respondent’s UK trademark registration. On the contrary, the case file does include correspondence between the Parties’ representatives seeking to negotiate co-existence arrangements and which appear to contemplate the Respondent’s continuing use of the disputed domain name. It appears this broader matter may remain outstanding as between the Parties, and in any event, it speaks to a broader dispute between the Parties than can be resolved under the Policy.
C. Registered and Used in Bad FaithAs the Complaint must fail, no good purpose would be served by considering this requirement under the Policy.
6. DecisionFor the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: March 9, 2022