Wellspring Products, LLC v. Meridian
LifeForce Inc
Claim Number: FA0610000812927
PARTIES
Complainant is Wellspring Products, LLC (“Complainant”), represented by Dwayne K. Goetzel, 700 Lavaca, Suite 800, Austin, TX 78701. Respondent is Meridian LifeForce Inc (“Respondent”), P.O. Box 42515, 2620 Eglinton Avenue East, Scarborough, ON M1K 2S0, Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ionspacanada.com>, <ionspadetoxcleanse.com>, <ionspafootbath.com>, <ionspafootsoak.com>, <ionspacleanse.com>, <ionspadetox.com>, <ionspawellness.com>, <ionspausa.com>, <ionspatechnology.com>, <ionspamachine.com>, <ionspainternational.com>, <ionspahealthusa.com>
and <ionspahealthcanada.com>, registered with Go Daddy Software, Inc., and <ionspahealth.com> and
<ionspadistributor.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
PANEL
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.
Professor Darryl C. Wilson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 5, 2006; the National Arbitration Forum received a
hard copy of the Complaint on October 6, 2006.
On October 6, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com
confirmed by e-mail to the National Arbitration Forum that the <ionspahealth.com> and <ionspadistributor.com> domain names are registered with Intercosmos
Media Group, Inc. d/b/a Directnic.com and that the Respondent is the current
registrant of the names. Intercosmos
Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by
the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 October 7, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <ionspacanada.com>, <ionspadetoxcleanse.com>, <ionspafootbath.com>, <ionspafootsoak.com>, <ionspacleanse.com>, <ionspadetox.com>, <ionspawellness.com>, <ionspausa.com>, <ionspatechnology.com>, <ionspamachine.com>, <ionspainternational.com>, <ionspahealthusa.com>
and <ionspahealthcanada.com> domain names are registered with Go
Daddy Software, Inc. and that the Respondent is the current registrant of the
names. Go Daddy Software, Inc. has
verified that Respondent is bound by the Go Daddy Software, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with the Policy.
On October 13, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 2, 2006 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@ionspacanada.com, postmaster@ionspadetoxcleanse.com,
postmaster@ionspafootbath.com, postmaster@ionspafootsoak.com, postmaster@ionspahealth.com,
postmaster@ionspadistributor.com, postmaster@ionspacleanse.com, postmaster@ionspadetox.com,
postmaster@ionspawellness.com, postmaster@ionspausa.com, postmaster@ionspatechnology.com,
postmaster@ionspamachine.com, postmaster@ionspainternational.com, postmaster@ionspahealthusa.com
and postmaster@ionspahealthcanada.com by e-mail.
A timely Response was received and determined to be complete on October
26, 2006.
A timely Additional Submission from Complainant was received on
November 1, 2006 but was determined to be incomplete pursuant to Supplemental
Rule 7 because payment was received after the deadline.
On November 3, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Professor Darryl C. Wilson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that it is the owner of the mark “Ionspa” having
used the same since 2002 to identify and market foot baths and related
products. Complainant states that it
has common law and registered trademark rights in the mark and that Respondent
knew of these rights due to Respondent’s past affiliations with Complainant.
Complainant contends that Respondent has registered 15 domain names
that incorporate its IONSPA trademark for the purposes of trading on
Complainant’s goodwill. Complainant
argues that the disputed domains are identical and confusingly similar to its
registered marks, that Respondent has no rights or legitimate interests in the
domain names, and that Respondent registered and used the domain names in bad
faith.
B. Respondent
Respondent asserts that it is not presently nor has it ever been
associated with Complainant but that it purchased the domain names from an
individual who was associated with Complainant. Respondent further asserts that the domain names in dispute are
intended for use in Canada and not in the USA where Complainant conducts its
primary business. Respondent states
that it “is in the process of owning substantial common law rights to the
trademark within Canada.” Respondent
asserts that it currently uses the term “ionicspa” in Canada and wants to keep
the domain names in dispute because they are similar to that mark. Respondent contends that it does not and
will not sell any products with the “ionspa” label in the USA and that the
products it is offering are distinctly different than those of the
Complainant. However, Respondent also
states that “it plans to use the domain names in connection with a competitive
‘Ion Spa’ product that will be imported into Canada.” Respondent asserts that consumers are not presently nor likely to
be confused by its use of the domains in dispute.
C. Additional Submissions
An Additional Submission was received in a timely manner from the
Complainant on November 1, 2006; however, the submission was not in compliance
with Supplemental Rule #7 and was therefore not considered as part of this
decision. Respondent provided a
response to Complainant’s Additional Submission but that response was also not
considered in this decision.
FINDINGS
Complainant, Wellspring Products, LLC is the
owner of the marks IONSPA and IONSPA FOOTBATH.
Complainant has continuously used the mark since 2002 in the manufacture
and sale of foot baths and related products.
Complainant has registered the mark IONSPA (U.S. Serial No. 78/939,264)
for its goods and services which it markets through various channels including
the internet. Complainant did not
authorize any of its former agents to independently secure domain names for
their personal use of its mark nor did it authorize Respondent’s use of the
domain names in dispute.
Respondent, Meridian LifeForce, Inc., is a
company with a Canadian address who claims to have constructed websites for,
and acted as a mediator on behalf of, one of Complainant’s former
distributors. Respondent purchased the
15 domain names in dispute from that party when the distributor and the
Complainant ceased working together.
The domain names owned by the Respondent are <ionspacanada.com>, <ionspadetoxcleanse.com>, <ionspafootbath.com>, <ionspafootsoak.com>, <ionspahealth.com>, <ionspadistributor.com>, <ionspacleanse.com>, <ionspadetox.com>, <ionspawellness.com>, <ionspausa.com>, <ionspatechnology.com>, <ionspamachine.com>, <ionspainternational.com>, <ionspahealthusa.com>
and <ionspahealthcanada.com>
These disputed domain names distributed by
the Respondent redirect internet inquiries to the Respondent’s website
<ionicspahealth.com>, on which the Respondent claims has no material
thereon referring to “ionspa.”
Respondent is in the process of seeking a trademark registration in
Canada for “ion spa” however, although Respondent claims its products are not
the same as Complainant’s. The
Respondent, allegedly at the behest of the Complainant’s former distributor,
did offer to sell the domain names in dispute to the Complainant. Respondent plans to compete with Complainant
directly or indirectly with “Ion Spa” products and wants to use the domain
names to assist in this competitive endeavor.
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.
Complainant contends that Respondent’s domain names are confusingly similar to its registered trademark IONSPA. Complainant has submitted evidence of its trademark registration for the IONSPA FOOTBATH mark (Reg. No. 3,002,644 issued September 27, 2005, filed June 30, 2003) with the United States Patent and Trademark Office (“USPTO”) and its application with the USPTO for the IONSPA mark (Ser. No. 78/939,264 filed July 27, 2006).
Complainant’s rights in the mark predate the registration of the disputed domains in 2005 and 2006 since its trademark rights relate back to the time of filing. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).
Furthermore, Respondent’s <ionspafootbath.com> domain name is identical under Policy ¶ 4(a)(i) because it incorporates Complainant’s entire IONSPA FOOTBATH mark, merely eliminating the spacing and adding the generic top-level domain.com. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be 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’s other domain names all contain Complainant’s mark IONSPA and add terms descriptive of Complainant’s and/or Respondent’s business. The mere addition of descriptive terms does not sufficiently distinguish the domains from Complainant’s registered mark and thus are confusingly similar under Policy ¶ 4(a)(i). See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).
Respondent’s assertion regarding its actions being directed toward Canada as opposed to Complainant’s principle place of business in the USA is misplaced. The UDRP is not premised on the need for Complainant’s to have established, registered domestic trademark rights in a country as a prerequisite to proceeding against an offending party. Nor does the Policy require the parties in dispute to be in the same country. Domain names are international by nature despite the residence or domicile of the individuals involved in a dispute. The use of the Internet is a global phenomenon and effective regulation cannot take place if limited by geographic boundaries. While trademark rights are confined by territorial limitations, domain names are not. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant has proven this element.
Complainant has asserted that Respondent is not authorized or licensed to register or use a domain name incorporating Complainant’s IONSPA mark or any variation thereof. Respondent asserts that it is not associated with Complainant but purchased the domain names from Complainant’s former distributor who Respondent was working with after a disagreement between the distributor and Complainant led to a dissolution of their relationship. Neither the WHOIS information report, or any other evidence presented by the Respondent indicate Respondent is commonly known by the disputed domains. The Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed names under Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).
Respondent has failed to rebut
Complainant’s prima facie case. See
M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum
Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com>
domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other
evidence in the record); see also Wells Fargo
& Co. v. Onlyne Corp. Services11, Inc.,
FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Further, Respondent admits that it is using the disputed domains to sell competing products and that the redirection of Internet users resolves to Respondent’s website established for that purpose. Such a use is not 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 Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum Jul. 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark).
Respondent’s claim that it plans to do business in Canada and that it will not sell or do business in the USA does not comport with the realities of Internet commerce. Additionally while Respondent on one hand characterizes Complainant’s mark as descriptive, Respondent inconsistently states that it is in the process of procuring common law and registered rights in Canada in a mark identical to Complainant’s mark.
Complainant has proven this
element.
Respondent states that it offered to sell the
disputed domains to Complainant as instructed by Complainant’s former
distributor. When Complainant rejected
the offer Respondent then purchased the domain names from the former
distributor, who was also a business associate of the Respondent. The mere offering of the domain names for
sale to Complainant is not dispositive of the bad faith issue. See
Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000)
(finding that considering or offering to sell a domain name is insufficient to
amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it
to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000)
(“[T]he mere offering [of the domain name for sale], without more, does not
indicate circumstances suggesting that Respondent registered the domain name
primarily for the purpose of selling, renting, or transferring the domain name
to the Complainant as required under [Policy ¶ 4(b)(i)].”).
However,
Respondent admits that it uses the domain names to redirect Internet users to
Respondent’s competing website. Such
use indicates an intentional effort to attract, for commercial gain, Internet
users to Respondent’s website by creating a likelihood of confusion with
Complainant’s mark under Policy ¶ 4(b)(iv). See Busy Body, Inc. v.
Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were
in the same line of business and the respondent was using a domain name
confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract
Internet users to its <efitnesswarehouse.com> domain name); see also Nokia
Corp. v. Private, D2000-1271
(WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iv) where the domain name resolved to a website that offered similar
products as those sold under the complainant’s famous mark).
Respondent’s
business relationship with Complainant’s former distributor indicates the
domain names were registered for Complainant and then became the subject matter
of a financial and employment dispute between the parties. Respondent ended up with the domain names
and now looks to compete with Complainant through use of the names. The totality of the circumstances
surrounding the registration and acquisition of the disputed domains support
the conclusion that the domain names were registered and are being used in bad
faith.
Complainant
has proven this element.
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 <ionspacanada.com>, <ionspadetoxcleanse.com>, <ionspafootbath.com>, <ionspafootsoak.com>, <ionspahealth.com>, <ionspadistributor.com>, <ionspacleanse.com>, <ionspadetox.com>, <ionspawellness.com>, <ionspausa.com>, <ionspatechnology.com>, <ionspamachine.com>, <ionspainternational.com>, <ionspahealthusa.com>
and <ionspahealthcanada.com> domain names be TRANSFERRED
from Respondent to Complainant.
Professor Darryl C. Wilson, Panelist
Dated: November 17, 2006
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