Chia Australia Pty Ltd v. Remy Bouche
Claim Number: FA1303001491120
Complainant is Chia Australia Pty Ltd (“Complainant”), represented by Teresa Aprile, Australia. Respondent is Remy Bouche (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thechiaco.com>, registered with Hostopia.com Inc. d/b/a Aplus.net, www.aplus.net.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
M. Kelly Tillery, Esquire as Panelist and Chair.
Clive Elliott, Esquire, as Panelist.
Roberto A. Bianchi, Esquire, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 22, 2013; the National Arbitration Forum received payment on March 22, 2013.
On March 22, 2013, Hostopia.com Inc. d/b/a Aplus.net, www.aplus.net confirmed by e-mail to the National Arbitration Forum that the <thechiaco.com> domain name is registered with Hostopia.com Inc. d/b/a Aplus.net, www.aplus.net and that Respondent is the current registrant of the name. Hostopia.com Inc. d/b/a Aplus.net, www.aplus.net has verified that Respondent is bound by the Hostopia.com Inc. d/b/a Aplus.net, www.aplus.net registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@thechiaco.com. Also on March 28, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 17, 2013.
On April 26, 2013, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Clive Elliott, Esquire, Roberto A. Bianchi, Esquire, as Panelists and M. Kelly Tillery, Esquire as Panelist and Chair.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows: Its Registered Trademarks represent its company, which specializes in sustainable farming and developing Chia Seed and Chia products. Complainant is the largest producer of natural, raw Chia seeds in the world, and it supplies its products to global markets in Australia, New Zealand, the United States, the United Kingdom, Korea, Hong Kong, Taiwan, and Singapore. Complainant owns Design Mark and Trademark Registrations around the world for its THE CHIA CO Trademark, including with Australia’s Department of Innovation, Industry, Science, Research and Tertiary Education (“DISSRTE”) (e.g., Reg. No. 1,394,583 registered November 16, 2010), China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 1,070,195 registered November 26, 2010), the Intellectual Property Office of New Zealand (“IPONZ”) (e.g., Reg. No. 833,379 registered November 16, 2010). Complainant has twenty-one domain names that incorporate the THE CHIA CO mark, including thechiaco.com.au, australianchia.com, chia.com.au, and other similar domain names. Complainant has a Facebook site using THE CHIA CO Trademark, which has over 4,000 fans and an average weekly reach of over 6,000 fans. Complainant’s company rebranded itself in January of 2009 and currently promotes its ingredient product globally, and complainant continues to build a successful chia business.
Respondent registered the <thechiaco.com> domain name, which is identical to Complainant’s THE CHIA CO mark. Respondent has no legitimate rights to the Trademark or the disputed domain name, and since the domain name’s registration in 2007, Respondent has failed to use the domain to establish a business or offer goods or services in relation to the domain name, and rather has the domain name parked. At the time Respondent registered the <thechiaco.com> domain name, Complainant was actively trading in the New Zealand market, and supplied its products to a bakery (Dovedale Bakery), a well-recognized bread brand located in Respondent’s city of residence. Respondent registered a number of domain names that included the word “chia,” which were all variations of “key chia players” in the market, all of which have been parked since their registration in 2007. Respondent demonstrates a pattern of registering domain names that use marks belonging to other entities, which disrupts the Trademark owners’ businesses. Respondent demonstrates intent to seek profit by its use of the <thechiaco.com> domain name by parking the domain.
B. Respondent
Respondent contends as follows: Respondent registered the <thechiaco.com> domain name, which stands for “The Chia Caps Oil.” Respondent is currently developing a product of caps containing Chia Seeds Oil, which is a long process, and is the reason why the domain name is still parked. Respondent registered the <thechiaco.com> domain name on December 30, 2007, with the intent to use the website to market its business. Respondent has legitimate rights in the <thechiaco.com> domain name, because Respondent is in the midst of developing a new concept in Chia seed oil capsules.
Complainant’s earliest Trademark Registration was lodged on August 5, 2009 for THE CHIA COMPANY, and on September 3, 2009 for THE CHIA CO, more than eighteen months after Respondent registered the <thechiaco.com> domain name. Complainant does not have rights in the THE CHIA CO mark that would precede Respondent’s rights in the disputed domain name. Complainant’s claim that it supplied Dovedale Bakery in New Zealand in 2006 and 2007 under its THE CHIA CO mark does not give Complainant legal rights, nor would it give Respondent knowledge of Complainant’s mark.
1) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name is identical to a trademark in which Complainant has rights.
2) Complainant has not met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name has been registered and is being used in bad faith.
3) Since Complainant has not met its burden on one required element of its claim, the Panel need not decide whether it has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interest in respect of the domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a Trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant’s rights in the THE CHIA CO mark originate from its Trademark Registrations with a number of international Trademark authorities, such as the DISSRTE (e.g., Reg. No. 1,394,583 registered November 16, 2010), the SAIC (Reg. No. 1,070,195 registered November 26, 2010), the IPONZ (e.g., Reg. No. 833,379 registered November 16, 2010). Complainant’s numerous international Trademark Registrations serve to demonstrate rights in the THE CHIA CO mark pursuant to Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant argues that the <thechiaco.com> domain name is identical to its THE CHIA CO mark, claiming that the domain name adds only the generic top-level domain (“gTLD”) “.com” and domain names omit spaces. The <thechiaco.com> domain name is identical to Complainant’s THE CHIA CO mark for the purposes of Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Respondent argues that its registration of the <thechiaco.com> domain name predates Complainant’s alleged rights in the mark. However, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (UDRP does not require complainant to have registered its Trademark prior to respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that respondent acted in bad faith).
Respondent has not registered or used the <thechiaco.com> domain name in bad faith since there is no evidence that Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (where respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their Trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent registered the <thechiaco.com> domain name eighteen months prior to Complainant’s Trademark Registration. Respondent registered the <thechiaco.com> domain name on December 30, 2007, and Complainant’s THE CHIA COMPANY mark was registered on August 6, 2009, and the THE CHIA CO mark was registered on September 3, 2009. Respondent could not have registered the <thechiaco.com> domain name in bad faith under Policy ¶ 4(a)(iii), as there is no evidence (or presumption) that it was aware of Complainant’s rights in the THE CHIA CO mark at the time Respondent registered the domain name. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (respondent could not have registered or used the disputed domain name in bad faith where respondent registered disputed domain name before complainant began using mark).
As UDRP ¶4(a)(iii) requires registration and use in bad faith, Complainant’s failure to prove registration in bad faith is fatal to its claim. The Panel need not decide whether there is use in bad faith.
Since Complainant has failed to prove one required element to secure relief, the Panel must deny the relief requested and need not decide whether Respondent has rights or legitimate interests in the domain name.
Having not established all three elements required under the ICANN Policy, the Panel concludes that the relief requested by Complainant shall be DENIED.
Accordingly, it is Ordered that the <thechiaco.com> domain name REMAIN WITH Respondent.
M. Kelly Tillery, Esquire as Panelist and Chair
Clive Elliott, Esquire, as Panelist
Roberto A. Bianchi, Esquire, as Panelist
Dated: May 7, 2013
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