The Complainant is Aura-Soma Products Limited, United Kingdom, represented by Fieldfisher LLP, United Kingdom.
The Respondent is Overstag B.V., the Netherlands, internally represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2020. On May 29, 2020, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On June 2, 2020, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”). In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 8, 2020. In accordance with the Regulations, article 7.1, the due date for Response was June 28, 2020. The Response was filed with the Center on June 12, 2020. On June 19, 2020, SIDN commenced the mediation process. On July 21, 2020, SIDN informed parties that the dispute had not been solved in the mediation process. The Complainant and the Respondent each filed a supplemental filing, respectively on July 29, 2020, and July 30, 2020. The Center appointed Alfred Meijboom as the panelist in this matter on August 4, 2020. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background The Complainant in the health and wellness sector is the owner of the following European Union Trade Marks: - EUTM No. 3229093 for the word mark AURA-SOMA COLOUR-CARE-SYSTEM, filed on June 26, 2003, and registered on September 9, 2005. - EUTM No. 18049814 for the word mark AURA-SOMA, filed on April 9, 2019, and registered on October 8, 2019; and - EUTM No. 18208005 for the figurative mark , filed on March 9, 2020, and registered on July 7, 2020, The disputed domain name has been registered with SIDN by the Respondent on December 19, 2000. It was originally registered by the Respondent in relation to the distribution of the Complainant’s products and to market related services of the Complainant’s brand in the Netherlands, and is still being used as such. 5. Parties’ Contentions A. Complainant According to the Complainant, the Trademarks have been used in relation to the Aura-Soma products and concept for over 30 years in Europe and the Complainant has built up a significant reputation and goodwill in such Trademarks during this time. The Respondent is a 100 per cent shareholder of Mensys B.V., which previously held a non-exclusive license to use the Trademarks in accordance with the terms of a long-term oral distribution agreement with the Complainant, based on individual orders governed by the Complainant’s terms and conditions of sale governed by English law. The distribution agreement was terminated on August 30, 2019. In this respect the Complainant alleges that the Respondent has no rights or legitimate interest in the disputed domain name anymore. Based on its right as the trademark owner, the Complainant requests the transfer of all assets featuring the Trademarks, including the disputed domain name. According to the Complainant, the disputed domain name was originally registered by the Respondent to service the distribution of the Aura-Soma brand in the Netherlands. The Complainant alleges that since the Respondent is no longer the Complainant’s authorized distributor, the Respondent has been using the disputed domain name in bad faith, because the Respondent keeps using the Trademarks to create an association between the Complainant and the Respondent to mislead customers and generate revenue at the expense of the goodwill in the Trademarks, and consequentially putting the goodwill, integrity and reputation of the Trademarks and the Complainant at risk. B. Respondent The Respondent claims that it has been selling Aura-Soma marked products and services since the founder of Aura-Soma requested it to do so, 30 years ago. The disputed domain name was registered in 2000, long before the Trademarks were registered, and has been used by the Respondent to promote Aura-Soma marked products and services as a distributor and certified practitioner. Moreover, Eva de Jong, who is one of the Respondent’s ultimate beneficiary owners, is a certified practitioner and has been a distributor and loyal course organizer and facilitator for Aura-Soma teachers in compliance with the terms and agreements the Complainant has created for students. As certified practitioner, the Respondent has a legitimate interest in the disputed domain name. After the termination of the distribution agreement, the Complainant still offered the Respondent the possibility to purchase its products based on the status of Ms. De Jong being a certified Aura-Soma practitioner. Ms. De Jong was also invited and accepted to a course from the Complainant. The Respondent alleges that there is no signed agreement which requires the Respondent to hand over any assets as requested by the Complainant. The Respondent was selected by the founder of the Complainant and orally instructed to enter the Dutch market. Consequently, there is a relationship between the parties to this dispute and the disputed domain name is still being used in a way that is beneficial to the Complainant. The Respondent disputes that the disputed domain name is being used in bad faith. According to the Respondent no customers are misled and there never was an agreement between parties that could force the Respondent to stop using the term “Aura-Soma”. In this context, the Respondent refers to the Complainant’s websites which read “The main role of a practitioner is to act as an ambassador for Aura-Soma in your home country. One of your main activities will be to hold personal consultations for those who use or would like to use, Aura-Soma on their path of consciousness and wellness”. The Respondent states it built the business for goods and services under the Trademarks itself. All investments in sales, marketing, inventory, logistics were made by the Respondent. The goodwill, integrity and reputation of the Trademarks and the Complainant are not at risk. The disputed domain name is being used for a bona fide offering of goods and services. Further, many other practitioners worldwide are using the term “Aura-Soma” as their domain name and on their websites. This is the core of the Aura-Soma system to which the Respondent is contributing. 6. Supplemental Filings Both the Complainant and the Respondent filed unsolicited submissions to the Center well after the mediation was closed. Article 11.2 of the Regulations provides that the panel in its sole discretion shall determine the admissibility of unsolicited submissions. Notwithstanding a panel’s power to decide otherwise, it is well established that unsolicited submissions normally are admissible only in demonstrated exceptional circumstances that made it impossible for a party to file such submission before the deadline of the proceedings provided such exceptional circumstances are explained in the supplemental filing (see, e.g., Formula One Licensing B.V. v. Louis Theunisse,WIPO Case No. DNL2009-0033; BIC Graphic Europe S.A. and Société BIC v. Alpha Holding B.V.,WIPO Case No. DNL2015-0059). The Complainant’s supplementary filing consists of the translation of an unspecified decision of a separate complaint against the Respondent’s use of the domain name Further, the Respondent’s supplementary filing consists of copies of the Respondent’s registration in the mercantile register, which it could have filed before. Consequently, the Panel considers the Parties’ supplemental filings inadmissible, and in any event inconsequential to the outcome. 7. Discussion and Findings Pursuant to Article 2.1 of the Regulations, the Complainant must assert and establish each of the following: a. a domain name is identical or confusingly similar to: I. a trademark, or trade name, protected under Dutch law in which the complainant has rights; or II. a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the complainant undertakes public activities on a permanent basis; and b. the registrant has no rights to or legitimate interests in the domain name; and c. the domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar It is established case law that the country code Top-Level domain “.nl” may be disregarded in assessing the similarity between the Trademarks on the one hand, and the disputed domain name on the other hand (see, e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008). As owner of the European Union Trademarks, the Complainant has rights in a trademark protected under Dutch law. The disputed domain name consists of the Complainant’s word mark “AURA-SOMA” in its entirety. The addition of the term “kleurentherapie” (Dutch for “color therapy”) is descriptive for the offered services and does not prevent a finding of confusing similarity between the disputed domain name and the Trademarks. The Panel finds that the disputed domain name is confusingly similar to the Trademarks for which reason the requirement of article 2.1.a of the Regulations has been met. B. Rights or Legitimate Interests Article 2.1.b of the Regulations requires the Complainant to establish that the Respondent has no rights to or legitimate interests in the disputed domain name. This condition is met if the Complainant makes out a prima facie case that the Respondent has no such rights or legitimate interests and if the Respondent fails to rebut this (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002). The Panel notes that it would have been helpful it the Complainant had provided documents reflecting the long-term oral distribution agreement, like examples of the mentioned individual orders and applicable terms and conditions and/or relevant correspondence. On the other hand, the Panel notes that the Regulations were adopted to deal with the problem of cybersquatting – that is, the registration of domain names consisting of, including, or confusingly similar to marks belonging to another for the purpose of profiting from the goodwill associated with the mark. The questions that the Panel addresses under the Regulations are relatively simple and straightforward and are not intended to resolve complex commercial or contractual disputes between longstanding parties (see, e.g., Kirloskar Proprietary Limited v. Kirloskar Pompen B.V.,WIPO Case No. DNL2018-0024). The dispute between the parties appears to be part of an overall conflict as to the status of their relationship. The Complainant states that it has terminated an oral long-term distribution agreement with the Respondent, while the Respondent claims that there has never been such an agreement, but that the Respondent has rather been permitted to resell the products and services under the mark “Aura-Soma” as a certified practitioner. The disputed domain name has been registered and used by the Respondent several years before the Complainant registered the Trademarks. The Complainant has not shown that the distribution agreement, which it claimed was orally concluded, included any arrangement or entitlement to the disputed domain name. This is especially relevant as the Panel understands that the Respondent has been using the term “Aura-Soma” as its trade name with the Complainant’s founder’s implied consent for 30 years. Consequently, the Panel finds that the Respondent seems to have some claim to rights to use the term “Aura-Soma” which predate the Trademarks; the Panel moreover notes that this matter involves competing claims of contract interpretation. Even if the Respondent would not have such claim to rights, it is relevant that the Respondent showed that the Complainant thanked the Respondent for “two orders” and addressed the Respondent as “registered practitioner” in an email of September 11, 2019, after the Complainant’s alleged terminated of the oral distribution agreement. According to the Respondent, being a “registered practitioner” would allow the Respondent to resell the Aura-Soma products and provide related services. However this may be, panels applying the UDRP and the Regulations alike have recognized in previous cases that under certain conditions resellers using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. In the Oki Data-case (OKI Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903), which equally applies to disputes under the Regulations 2 (see, e.g., General Electric Company v. V.O.F. Aquacombi,WIPO Case No. DNL2008-0042and Dr. Ing. h.c. F. Porsche v. Bv berry smits trading co,WIPO Case No. DNL2009-0049) the panel set out four requirements in deciding whether the respondent in that case was making a bona fide use of the disputed domain name (the “Oki Data test”): a. the Respondent must actually be offering the goods or services at issue; b. the Respondent must use the website to sell only the trademarked goods or services; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods; c. the website must accurately and prominently disclose the registrant’s relationship with the trademark owner; d. the Respondent must not try to corner the market in domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. The Panel finds that the third condition is not fulfilled as the disputed domain name resolves to a website which prominently shows the Complainant’s figurative “Aura-Soma” trademark and states “Welkom bij Mensys BV” (“Welcome to Mensys BV” in English) and “Welkom op de website en de webwinkel van Aura-Soma” (“Welcome to the website and the web shop of Aura-Soma” in English). The website does not accurately and prominently disclose the Respondent’s relationship with the Complainant, even if it is not in dispute that the products and services offered on the website originate from the Complainant as trademark owner, and not just from the Respondent as trade name holder. Rather, they give the false impression that the Respondent is somehow officially authorized and affiliated with the Complainant. Consequently, the Respondent has failed to meet the Oki Data criteria, and the Panel finds that the Complainant has sufficiently made out its case and that the requirement of article 2.1.b of the Regulations has been met. C. Registered or Used in Bad Faith For a Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered or is being used in bad faith. Article 3.2 of the Regulations provides the following examples of circumstances which may demonstrate that the domain name has been registered or is being used in bad faith: “a. the domain name has been registered or acquired primarily for the purpose of selling, renting or transferring it to the complainant or to the complainant’s competitors for valuable consideration in Excess of the cost of registration; b. the domain name has been registered in order to prevent the complainant from using it; c. the domain name has been registered primarily for the purpose of disrupting the complainant’s activities; d. the domain name has been or is being used for commercial gain, by attracting Internet users to a website of the registrant or other online location through the likelihood of confusion which may arise with the trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation registered in the Netherlands as to, for example, the source, sponsorship, affiliation or endorsement of the website of the registrant or other online location(s) or of products or services on the domain registrant’s website or another online location.” The disputed domain name was registered in 2000, whereas the Trademarks were filed in 2003 (registered in 2005), 2019, and 2020. The Panel notes that it seems undisputed on the limited record before it that the Respondent has not registered the disputed domain name in bad faith, or at least had an arguable claim to a good faith registration. Because the Complainant has apparently not previously opposed the registration and use of the disputed domain name by the Respondent, it seems plausible for the Respondent to have assumed that it could register and use this disputed domain name. To establish the Respondent’s bad faith for the current use of the disputed domain name, the Complainant must show that the Respondent takes unfair advantage or otherwise abuses or engages in behavior detrimental to the Trademarks by creating an impression of authorization with the Complainant. As a result of the absence of an appropriate disclaimer which discloses the Respondent’s relationship with the Complainant (see paragraph 7.B above) the Panel finds that the Respondent takes unfair advantage of the Trademark and is therefore using the disputed domain name in bad faith (see Liqui Moly GmbH v. Royal Trading B.V.,WIPO Case No. DNL2014-0028). Consequently the requirement of article 2.1.c of the Regulations has been met. 8. Decision For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the disputed domain name Alfred Meijboom 1 Under its general powers the Panel has looked online and found that it relates to the ADR decision in CAC Case No. 07963, Aura‑Soma Products Limited, Sean Sargent v. Overstag B.V., M.B. de Jong. 2 In view of the fact that the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that cases decided under the UDRP, are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).
hereinafter “the Trademarks”.
Panelist
Date: September 15, 2020
Full & Egal Universal Law Academy