Ardyss International, Inc. v. Lauren Silva Group, Inc.
Claim Number: FA0912001296536
Complainant is Ardyss International, Inc. (“Complainant”), represented by Michael
W. Starkweather, of Advantia Law Group,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ardyssbodymagicshop.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 30, 2009.
On December 1, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ardyssbodymagicshop.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 8,
A timely Response was received and determined to be complete on December 23, 2009.
On December 31, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant states that it has, since 1993, continuously and internationally used the ARDYSS mark to market and sell a variety of beauty, clothing (in particular, men's and women's underwear), health care, nutrient, food, and other products. According to the Complainant, because of this long, continuous and substantially exclusive use of the mark and the advertising expenditures promoting the mark, the relevant public in the United States and worldwide have come to associate goods sold under the mark with the Complainant.
The Complainant claims to be the owner of a number of registered trademarks for ARDYSS and variations thereof, such as the following US Trademark Registrations:
No 3,098,268 ARDYSS MANGOSTANA PLUS
No 3,097,943 COFFEE ARDYSS
No 3,097,927 ARDYSS CLEANSE TEA
No 3,221,455 ARDYSS
No 2,768,771 ARDYSS LIFE
No 2,659,115 ARDYSS PLUS
(Copies of printouts from US Principal Register provided for No
3,221,455 ARDYSS and No
The Complainant also holds the domain name registration of <ardyss.com>.
The Complainant asserts that it spends over a hundred thousand dollars annually promoting, advertising and marketing products under its ARDYSS marks, and has created substantial goodwill towards the mark with continuous marketing, placement of the mark on products, brochures, business cards and other promotional material.
According to the Complainant, the disputed domain name is substantially identical and/or confusingly similar to the ARDYSS trademark, as it includes the mark ARDYSS with the addition of the words BODY, MAGIC and SHOP – all being used in a manner that is descriptive of ARDYSS.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant accuses the Respondent to use <ardyssbodymagicshop.com> to advertise web pages containing unauthorized product offerings and/or counterfeit product offerings of products sold and distributed through the distribution channels of Ardyss International, Inc. Complainant informs that distribution of ARDYSS branded products is strictly limited to distributors that operate under the Complainant’s distributor agreement (provided as Exhibit 4 of the Compliant). The said agreement expressly restricts distributors from using the mark ARDYSS in any form on web pages, in domain names, and on marketing and advertising materials not created and provided by the Complainant.
The Complainant confirms that the Respondent is not a distributor of Complainant and is in no way authorized to distribute, market, or advertise products of the Complainant, referring to an Affidavit signed by Complainant’s Chief Financial Officer (Exhibit 5 of the Complaint). Complainant further states that, wherein any product offered is actually produced by Complainant, it is being offered at prices not in accordance with the distribution agreement. Complainant therefore concludes that the Respondent may be in illegal collaboration with an unnamed distributor that is operating contrary to the terms of the distributor agreement.
The Complainant describes Respondent’s website, noting that the site contains claims that the products offered are genuine products from the Complainant, implying that Respondent is an authorized distributor, which again is denied by the Complainant.
The Complainant refers to the WIPO UDRP Panel’s majority view on the question "Can a reseller have a right or a legitimate interest in the disputed domain name?" (represented by Oki Data Americas, Inc. v. ASD, Inc., WIPO D2001-0903 – although the specific case is not mentioned in the Complaint), and concludes that even where Respondent is selling some genuine goods of the Complainant, and even were there to be an actual relationship with Complainant, the said majority view would decide that the Respondent should have no legitimate right to the disputed domain name.
In addition, the Complainant, referring to the fact that nothing in the WHOIS information indicates that the Respondent has ever been commonly known by the disputed domain name, concludes that has not been commonly known by <ardyssbodymagicshop.com> or the mark ARDYSS.
Finally, the Complainant claims that the Respondent has registered and used the disputed domain name in bad faith - in particular by having intentionally attempted to attract, for commercial gain, Internet users to Respondent's web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on Respondent's web site or location. Complainant argues that Respondent’s web site implies that Complainant’s branded products are available for sale on the site, which implications are fraudulent and misleading.
The Respondent requests that the Panel make a finding that the dispute is not within the scope of Paragraph 4(a) of the Policy.
Respondent claims to have been an “Independent Distributor” for the Complainant since September 11, 2006, having placed orders in excess of $240,000.00 since then, including a recent order for $12,407.84 on December 11, 2009. The Respondent refers to the fact that the Complainant has created and maintains a website for the Respondent, stating that the Respondent is an Independent Distributor (Printouts of Respondent’s account with Complainant, website and internal order site provided as Exhibits 1 – 4 of the Response).
The Respondent states that it has never been formally notified of any violations of the Complainant’s distributor agreement, and even if this was so, these issues would fall outside scope of Paragraph 4(a) of the Policy which was not implemented to handle contractual or other business disputes between parties with a preexisting relationship.
Respondent argues that the Complainant does not object to Independent Distributors including the word ARDYSS in their domain names, claiming that there exists in excess of 837 active domain names purchased containing the said word of which the majority are held by Independent Distributors for the Complainant.
The Respondent requests that the Panel make a finding of reverse domain-name hijacking, claiming that the Complainant has acted in bad faith by stating that the Respondent has no relationship with the Complainant.
The Respondent refers to Exhibit 5 of the Complaint, an Affidavit stating that a Wendy Smith is not a distributor of the Complaint, denying having any affiliation with that person.
The Respondent also claims that the Complainant has asserted in bad faith that the Respondent is distributing counterfeit products from some unnamed distributor, when the Complainant – according to the Respondent - knows in fact the Respondent purchases authentic products from the Complainant.
In addition, the Respondent accuses the Complainant for not serving the Respondent with the full Complaint until December 11, 2009, and that the Complainant has exceeded the allowed number of pages in a complaint.
According to the Respondent, the Complainant only sells products through their Independent Distributors, and not directly to consumers. Respondent concludes that it therefore has a fair use right to include ARDUSS in their domain name, and that the Complainant has lost its rights to their mark by allowing their Independent Distributors to purchase and maintain websites on 837 active domain names which include the word ARDYSS.
Respondent asserts that the website connected with the disputed domain name was launched on or about July 1, 2009 wherein it has maintained a statement of the relationship between the Complainant and the Respondent on the body of the home page. For the last several months the statement has been located at the top of the website on every page.
Respondent informs that the Complainant’s products are regularly advertised and sold below suggested retail price, and that therefore Complainant’s allegation that the Respondent could only sell their products for the price they offer them at if they were counterfeit is false.
Finally, Respondent claims to be known by <ardyssbodymagicshop.com> as it is listed on Google and hundreds of customers per month contact the Respondent though the disputed name, finding Respondent’s email address and phone number on the website.
Scope of the Proceedings under the UDRP
Respondent contends that it has been an independent distributor of Complainant’s products since 2006, and concludes that this case is not suited for UDRP analysis, but it is instead a case of whether Respondent can continue as an independent distributor of Complainant’s products. On the other hand, Complainant argues that this case falls under the UDRP because Respondent is not an independent distributor and in fact sells Complainant’s unauthorized goods as well as counterfeit versions of Complainant’s goods.
It is true, that the UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes. Prior Panels have dismissed Complaints primarily based on contractual disputes. See Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”).
However, in most such cases, the respondents had registered the disputed domain names based on a specific domain name agreement between the parties, on behalf of the complainant, or similar situations. Each Panel has discretion to determine whether or not it has jurisdiction over a dispute. The Panel in this case finds that while the distribution contract may play a certain role in the dispute, the Complaint is not primarily based on contractual issues, and moreover finds that there is sufficient evidence for it to properly decide the dispute under the UDRP. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. … Complainant also complied with all of the other technical requirements of the UDRP Policy. …This Panel agrees that Complainant has not proved that Respondent used or registered its domain name in bad faith. This does not mean, however, that this Panel is deprived of jurisdiction to make that decision.”).
This Panel finds no reasons to not decide the instant dispute on the merits strictly under the guidelines of the Policy.
Reverse Domain Name Hijacking
Respondent suggests that Complainant is guilty of Reverse Domain Name Hijacking.
Rule ¶ 1 defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rule ¶ 15(e) further defines the situation as filing the complaint “in bad faith, for example in an attempt to harass the domain-name holder.”
Such a claim is frequently made by respondents, but a finding of Reverse Domain Name Hijacking is rarely granted. To prevail, the Respondent must show that Complainant knew of Respondent’s unassailable right or legitimate interest or of the clear lack of Respondent’s bad faith registration and use but nevertheless brought the Complaint in bad faith. See Rohl, LLC v. ROHL SA, WIPO Case No. D2006-0645 “Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy”.
In this case, the Complainant firmly states that there is no commercial relationship with Respondent, a statement said to be proved by providing an Affidavit obviously regarding a completely different party than Respondent and citing completely different domain names than the one of this dispute. As Respondent have been able to prove that it has some kind of agreement with the Complainant, and obviously have ordered products via Complainant’s web site, prior to this dispute, this Panel finds it unlikely that Complainant would not have been aware of Respondent’s activities and that the goods offered on Respondent’s web site likely originates from Complainant.
This Panel cannot but draw the conclusion that the Complainant has engaged in a wilful attempt to deceive the Panel, hiding facts and making statements regarding Respondent that the Complainant presumably would easily have been able to correct after checking its internal records.
The Panel therefore states that this is a case of Reverse Domain Name Hijacking.
Complainant’s Trademark Rights and Respondent’s domain name registration
The Panel finds that Complainant has established trademark rights in the following trademarks:
Registered on March 27, 2007 and first used in commerce on January 22, 2002
Registered on May 30, 2006, and first used in commerce on January 22, 2002
The Panel does not rule out the possibility of Complainant having registered rights also in the other marks listed in the Complaint, but in lack of copies of the Certificate of Registrations, no certain conclusion can be made. However, in order to render a decision the evidence presented for the two abovementioned marks are perfectly enough.
Respondent registered the domain name <ardyssbodymagicshop.com> on June 3, 2009.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
<![if !supportLists]>(1) <![endif]>the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
<![if !supportLists]>(2) <![endif]>the Respondent has no rights or legitimate interests in respect of the domain name; and
<![if !supportLists]>(3) <![endif]>the domain name has been registered and is being used in bad faith.
As concluded above, the Complainant is at least the owner of US
Trademark Registrations for the word mark ARDYSS (registered on March 27,
The relevant part of the disputed domain name is <ardyssbodymagicshop>. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The domain name is distinguished only by the addition of the generic terms “body” and “shop”, and the word “magic”. Both “body” and “shop” refers to Complainant’s products and sales facilities, and “bodymagicshop” put directly after Complainant’s mark ARDYSS is still likely to be associated with, and confusingly similar to, the marks ARDYSS and A ARDYSS. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks ARDYSS and A ARDYSS. The Policy ¶ 4(a)(i) has been satisfied.
The Complainant accuses the Respondent for making unauthorized product offerings, and even suggests that the goods sold as genuine ARDYSS products on Respondent’s web site are counterfeits. These are severe accusations, and the Panel would have expected the same to be supported by at least some further documentation but there is none.
The Complainant also strongly denies all commercial relationship with Respondent, and especially denying the Respondent is a distributor of the Complainant. In support of the latter statement, Complainant has provided an Affidavit from its Chief Financial Officer, however concerning i) a named person, obviously with no connection to the Respondent, and ii) three domain names with no connection to the present dispute.
Having so strongly denied any form of authorization, the Complainant then refers to an unreadable copy of the Terms of Agreement for Distributors, as well as to some sections of its Statement of Policies and Procedures, restricting (as understood by this Panel) distributors from using the mark ARDYSS and to develop web sites of their own, without written permission from the Complainant.
On the other hand, the Respondent has managed to prove (with Exhibit 1, 2, 3, 4 and 6 of the Response) that Respondent is an approved Independent Distributor of the Complainant, that the goods sold at Respondent’s web site under the disputed domain name are genuine ARDYSS products and that Respondent’s web site states the commercial relationship with the Complainant. The latter is partly confirmed by the Complainant, concluding regarding Respondent’s web site: “The implication therefore is that Respondent is an authorized distributor, which is not the case.”
Under these circumstances, the Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
The Complainant refers to the WIPO UDRP Panel’s majority view on the question "Can a reseller have a right or a legitimate interest in the disputed domain name?", and concludes that even if there were to be an actual relationship with Complainant, the said majority view would decide that the Respondent should have no legitimate right to the disputed domain name. The Panel disagrees with the said conclusion.
The referred to majority view states that authorized dealers of Complainant’s goods may use Complainant’s trademark in its domain name if Respondent is
<![if !supportLists]>- <![endif]>actually selling the goods or services at issue;
<![if !supportLists]>- <![endif]>selling only Complainant’s products on the website in question;
<![if !supportLists]>- <![endif]>accurately disclosing the relationship between Complainant and Respondent (meaning Respondent is not causing confusion by suggesting Respondent is the owner of the trademark); and
<![if !supportLists]>- <![endif]> not attempting to corner the market in all domain names incorporating Complainant’s mark and thereby prevent Complainant from reflecting its mark in its own domain name).
Respondent in this case has made it likely that it has an agreement with Complainant to act as Independent Distributor, that the goods offered at the web page is genuine goods from the Complainant (ordered directly from the Complainant), that at least nothing on the web site suggests that Respondent is the owner of the ARDYSS trademark, and that – by only holding one domain name, not identical to ARDUSS (meaning that the domain name consists of more than just the trademark), the Respondent has not attempted to preventing the Complainant from reflecting its mark in its own domain name.
The Panel concludes that Complainant has not been able to establish a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests, whereas Respondent has presented convincing arguments and supporting documents that it was using the <ardyssbodymagicshop.com> domain name and web site in connection with bona fide offering of goods and services, before any notice of the dispute.
The third requirement for the Complainant to prove is whether the domain name has been registered and is being used in bad faith. Policy ¶ 4(b) sets out a number of circumstances that shall, in particular but without limitation, be evidence of the registration and use of a domain name in bad faith:
(I) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the Domain Name.
There are no such circumstances in this case.
(ii) Circumstances indicating that the Respondent has registered the Domain Name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.
There is no such pattern of conduct from Respondent’s side, and the disputed domain name does not prevent Complainant from using its trademark in a corresponding domain name. In fact, the Complainant has registered and is using <ardyss.com>, identical to their registered trademark ARDYSS.
(iii) Circumstances indicating that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor.
Respondent has informed that Complainant is only selling its products via independent distributors. Thus, Respondent and Complainant are not competitors but partners in trade. Respondent’s activities, as evidenced in the Response, have not been for the purpose of disrupting Complainant’s business. On the contrary, Respondent has placed orders with Complainant for a significant value, therewith presumably assisting Complainant’s business.
(iv) By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said website / location or of a product or service on that website / location.
It is a fact that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website by using means of creating an image of affiliation or endorsement between Complainant and Respondent. This has however been done in good faith and for the profit of both parties, especially considering that Respondent in fact is an Independent Distributor of Complainant. The actions are done with a lack of the element of “confusion”.
There are not other facts or circumstances indication bad faith registration and use from the side of the Respondent.
The Panel finds that Complainant have failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the 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 the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
In addition, as concluded that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii), the Panel also find that Respondent did not register or use <ardyssbodymagicshop.com> in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
The Panel also makes a finding of Reverse Domain Name Hijacking against the Complainant.
Dated: January 14, 2010
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