National Arbitration Forum

 

DECISION

 

AHAVA NA, LLC v. George White and Yaniv Mattan

Claim Number: FA0504000453904

 

PARTIES

Complainant is AHAVA NA, LLC (“Complainant”), represented by Sidney D. Bluming, of Bluming Freiman Franco LLP, 141 East 45th Street-19th Floor, New York, NY 10017.  Respondents are George White and Yaniv Mattan (collectively, “Respondent”), 46 Allendale, Terre Haute, IN 47802.  Respondents are not represented by counsel.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ahava-net.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Richard DiSalle is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2005; the National Arbitration Forum received a hard copy of the Complaint on April 11, 2005.  Thereafter, an Amended Complaint, dated April 14, 2005, was filed.

 

On April 10, 2005, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the domain name <ahava-net.com> is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 April 15, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 5, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@ahava-net.com by e-mail.

 

An untimely Response was received and determined to be complete on May 7, 2005.  The Panel considered the response which was two days late, but was received before a Panelist was appointed and any consideration made.

 

On May 20, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the undersigned as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A.     Complainant

 

The domain name is identical to a registered trademark in which the Complainant has exclusive rights. [ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).]

The owner of the subject trademark is Dead Sea Laboratories, Inc. (“DSL”), an Israeli company.  Complainant is the exclusive distributor of DSL effective January 1, 2005, with the exclusive rights to distribute the above described products in the United States and Canada.  Respondent’s URL incorporates in its entirety the identical registered trademark under which Complainant has exclusive distribution rights, and features the trademark prominently in its website content.

Respondent’s use of the domain name is not in connection with a bona fide

offering of goods or services, but rather an intentional attempt to attract, for

commercial gain, Internet users to its website, by creating a likelihood of

confusion with the trademark owner and Complainant’s distribution rights as to

source, sponsorship, affiliation, or endorsement of its website.  Respondent is obtaining its inventory of trademarked products through gray market sources and, upon information and belief, is surreptitiously importing them into the United States. Respondent has no agreement from or rights through DSL.

Respondent was not commonly known by the domain name prior to registering the website, but has utilized the subject trademark in all case in violation of the trademark owner’s rights, and by infringing on those rights.

 

Respondent registered its domain name on October 15, 2004.  The trademark was registered on August 31, 1993, and thus Respondent was on notice of its infringement.  In addition, the prior exclusive distributor under the trademark maintained a website “ahava.com” and thus Respondent  was on notice of the rightful user of the trademark, yet Respondent  created a mark only slightly different (using the “-net” addition) to intentionally confuse Internet users.

 

As evidence of Respondent’s bad faith, it first listed its address on its website as 684 Chestnut Place, Secaucus, NJ 07094. Complainant alleges that communications to that address were returned, and a physical inspection revealed that no such address exists.

 

B. Respondent

 

The complainant has purchased the domain name: ahavaus.com. He could also purchase any other domain name ending with "net", "org" etc. The Respondents have purchased the domain name "ahava-net" 100% legally, as it was available to buy. It combines both the words "ahava" and "interNET". The meaning is buying ahava at the Internet. Respondents do not make any attempt to become similar to the the ahava company or to make somebody think that we are the owner of ahava company, the producer. Respondents do distribute ahava product on the Internet but no more than this.

 

It seems that the only reason that the complainant does not want Respondents to sell ahava products on the Internet is that those products are sold for much less than Complainants. For instance, Complainants sell Hand Cream for $17, Respondents sell for $12. He does not want fair competition at all, but wants to be a monopoly.

 

The complainant is the only distributor in the US but Respondents sell worldwide and accept orders from Australia, New Zealand, Canada, UK and many other countries

 

It is very clear that the complainant emphasizes that he is the Official U.S. Site and that he is the authorized distributor of AHAVA products in the US. Meaning that the customer cannot be mistaken about the question whether ahava-net is the official web site or not. It is more than clear that ahava is the official web site and ahava-net is not trying to hide this fact from anyone.

 

 

FINDINGS

 

(1)    the domain name registered by the Respondent is confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the 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.

 

 

 

DISCUSSION

 

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:

 

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

 

Identical and/or Confusingly Similar

 

Complainant, through its distributorship agreement with Dead Sea Laboratories, Inc. (“DSL”), which licenses relevant intellectual property rights to Complainant, has established rights in the AHAVA mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,790,035 issued August 21, 1993).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

 

Complainant contends that Respondents’ <ahava-net.com> domain name is confusingly similar to Complainant’s AHAVA mark because Respondent’s domain name incorporates Complainant’s mark in its entirety and merely adds a hyphen and the word “net.”  Such small changes are not enough to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).  See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) ( “[The] addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).

 

Furthermore, Respondent’s domain name adds that generic top-level domain “.com.”  Such a minor addition is insufficient to distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).

 

Complainant has proper standing to bring this Complaint, as the distributorship agreement between Complainant and DSL expressly grants Complainant “the right to institute and conduct legal action . . . against unauthorized distributors offering the [p]roducts for sale in the [t]erritory or infringers utilizing any of the trademarks associated with [a]ll [p]roducts.”

 

Rights or Legitimate Interests

 

Complainant contends that Respondents are using the confusingly similar <ahava-net.com> domain name to operate a website that sells Complainant’s skincare products without authorization from Complainant or DSL.  Such use is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority is not a bona fide use); see also K&N Eng’g., Inc. v. Weinberger, FA 114414 (Nat. Arb. Forum July 25, 2002) (holding that the respondent, who was not an authorized distributor of the complainant’s products, lacked rights or legitimate interests in a domain name incorporating the complainant’s mark).

 

Furthermore, the Respondents are neither commonly known by the disputed domain name nor authorized to register domain names featuring Complainant’s AHAVA mark.  Thus, Respondent lacks rights and legitimate interests in the <ahava-net.com> domain name pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)

 

Registration and Use in Bad Faith

 

The Respondents’ use constitutes disruption and is evidence that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Wall v. Silva, FA 105899 (Nat. Arb. Forum Apr. 29, 2002) (finding that despite respondent’s claim that it used the <josephinewall.com> domain name, which was identical to complainant’s JOSEPHINE WALL mark, to help complainant become popular in the United States, the respondent’s use of the domain name to sell the complainant’s artwork constituted disruption pursuant to Policy ¶ 4(b)(iii)).

 

Because Respondents’ <ahava-net.com> domain name is confusingly similar to Complainant’s AHAVA mark, consumers accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website.  Thus, the Panel may conclude that Complainant’s commercial use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by selling used Fanuc parts and robots on website <fanuc.com> because customers visiting the site were confused as to the relationship between the respondent and the complainant).

 

Furthermore, Respondents registered the <ahava-net.om> domain name with actual or constructive knowledge of Complainant’s rights in the AHAVA mark due to Complainant’s registration of the mark with the USPTO.  Moreover, we may infer that Respondents registered the disputed domain name with actual knowledge of Complainant’s mark due to the obvious connection between Respondent’s website and Complainant’s business.  Registration of a domain name that is confusingly similar to another’s mark despite actual or constructive knowledge of the mark holder’s rights is tantamount to bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the complainant’s mark when it registered the subject domain name”).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ahava-net.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Richard DiSalle, Panelist
Dated: June 3, 2005