Gapardis Health and Beauty, Inc. v. Frantz Boulos
Claim Number: FA2010001917653
Complainant is Gapardis Health and Beauty, Inc. ("Complainant"), represented by David M. Rogero, Florida, USA. Respondent is Frantz Boulos ("Respondent"), represented by Jose I. Rojas, Haiti.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <minoplus.com>, registered with Tucows Domains Inc.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 20, 2020; the Forum received payment on October 20, 2020.
On October 20, 2020, Tucows Domains Inc. confirmed by email to the Forum that the <minoplus.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 October 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 2020 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@minoplus.com. Also on October 21, 2020, the Written Notice of the Complaint, notifying Respondent of the email 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 November 16, 2020.
On November 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the trademark MINO PLUS, which is the subject of two United States trademark registrations for use in connection with hair growth preparations and various other cosmetic products. The mark apparently has been used by Respondent and its predecessors in interest for such products since 2005.
The disputed domain name <minoplus.com> was registered in 2009. It is being used for a one-page website that displays only the statement "This product is a fake…," and apparently has been used in this manner since the domain name was registered. Complainant asserts that this use "makes it clear that the domain name was registered primarily for the purpose of disrupting the business of Complainant and to tarnish the goodwill associated with Complainant’s trademark."
Complainant contends on the above grounds that the disputed domain name <minoplus.com> is identical to its MINO PLUS mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent manufactures and sells a hair growth stimulant product for which he uses the trademarks MINOVAL and MINOVAL PLUS. Respondent states that he has used these marks in this manner since 1984, long before Complainant's predecessor in interest adopted the similar MINO PLUS mark, which Respondent describes as "a mere contraction" of its MINOVAL PLUS mark. Respondent owns trademark registrations for MINOVAL and MINOVAL PLUS in the Republic of Haiti, and a licensee of Respondent owns corresponding United States registrations. Respondent states further that in 2009 he successfully opposed an attempt by an entity associated with Complainant to register MINOPLUS as a trademark in Haiti, and that as a result he (Respondent) owns the Haiti trademark registration for MINOPLUS. Respondent accuses Complainant of waiting to initiate this proceeding until after its U.S. trademark registrations attained incontestable status, to avoid alerting Respondent of those registrations, and asks that this proceeding be barred under the doctrine of laches and that Complainant be found to have engaged in an attempt at reverse domain name hijacking.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights, and that it is being used in bad faith. The Panel further finds that Complainant has not proved that Respondent lacks rights or legitimate interests in respect of the disputed domain name, nor that the disputed domain name was registered in bad faith. In addition, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
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.
The disputed domain name <minoplus.com> corresponds to Complainant's registered MINO PLUS trademark, with the space omitted and the ".com" top-level domain appended thereto. Neither the omission of a space nor the addition of a top-level domain defeats identicality for purposes of paragraph 4(a)(i) of the Policy. See, e.g., National Geographic Society v. Ryan G Foo / PPA Media Services, FA 1609301 (Forum Apr. 16, 2015) (finding <natgeo.org> identical to NAT GEO); Israel Sandoval d/b/a djradio.com v. Java Pictures Inc., FA 677936 (Forum May 29, 2006) (finding <djradio.com> identical to DJ RADIO). The Panel therefore considers the disputed domain name to be identical to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a website that appears to have no purpose other than disrupting Complainant's business and tarnishing its goodwill.
Respondent has come forward with evidence that he owns rights in the corresponding mark (MINOPLUS) in Haiti; that he owns and uses similar marks (MINOVAL and MINOVAL PLUS) for similar products in Haiti and (through a licensee) the United States; and that his use of the marks predates any use by Complainant or its predecessors of the MINO PLUS mark.
Under paragraph 4(c)(i) of the Policy, Respondent may demonstrate rights and legitimate interests by proving "before any notice to [Respondent] of the dispute, [Respondent's] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services." Respondent has made such a showing, supported in part by evidence of longstanding trademark registrations in the United States and Haiti. Accordingly, the Panel finds that Complainant has not proved that Respondent lacks rights and legitimate interests in respect of the disputed domain name, as required by paragraph 4(a)(ii) of the Policy.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor."
The only apparent use of the disputed domain name has been for a website that has no apparent purpose other than disrupting Complainant's business and tarnishing its goodwill. The Panel notes, however, that the domain name appears to have been registered by Respondent shortly after he was awarded the trademark registration for MINOPLUS in Haiti, following his successful opposition to the attempt by Complainant or an affiliated entity to register the mark. The Panel is therefore inclined to view Respondent's registration of the disputed domain name as a defensive registration aimed at protecting his mark, with disruption of Complainant's business being at most a secondary motivation. The Policy requires that both the registration of the domain name and its use be in bad faith, and the Panel is of the view that Complainant has proved only bad faith use.
Under Paragraph 1 of the Rules, "Reverse Domain Name Hijacking" (RDNH) is defined as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." Paragraph 15(e) of the Rules provides that if "the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
Where a Complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy, a finding of RDNH may be appropriate. See, e.g., Sweet Art Co. LLC v. Sweet Art, Inc., FA 1617812 (Forum July 31, 2015). RDNH may also be appropriate where (inter alia) a Complainant attempts to mislead the Panel or provides false or intentionally incomplete material evidence. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.16 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/.
The Complainant identifies Respondent by name but does not indicate that Respondent is a competitor nor provide any other information regarding Respondent or his activities or trademark rights, let alone the fact that Respondent is the senior user of similar marks. Indeed, Complainant's accusation of bad faith appears to have been carefully drafted to avoid referring to Respondent as a competitor, even though that is a condition of the applicable provision of the Policy. The Complainant also fails to mention Respondent's rights in the MINOPLUS mark in Haiti, a fact which almost certainly would have been known to Complainant. While Complainant acquired the U.S. trademark rights in MINO PLUS subsequent to that dispute, the Panel notes that Complainant has the same physical address as its predecessor in interest, shares at least one director with the entity involved in the Haiti trademark dispute, and is represented by counsel in this proceeding. The Panel therefore considers it unlikely that Complainant could have been unaware of this prior history or its relevance to this proceeding.
Complainant knew or should have known that it could not prove that Respondent lacks rights and legitimate interests in the disputed domain name, and nevertheless initiated this proceeding in an improper effort to obtain the domain name. Furthermore, Complainant withheld relevant information in an apparent attempt to mislead the Panel regarding Respondent's rights or legitimate interests and the circumstances under which the disputed domain name was registered. Accordingly, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED, and finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Accordingly, it is Ordered that the <minoplus.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: November 23, 2020
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