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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Vivienne Talsmat and Rejuvalife Limited v. Richard Wilson

Case No. D2006-0133

 

1. The Parties

The Complainants are found by the Panel to be Vivienne Talsmat of East Grinstead, and Rejuvalife Limited, all of Surrey, United Kingdom and both represented by Finers Stephens Innocent LLP London United Kingdom.

The Respondent is Richard Wilson of Doncaster, United Kingdom.

 

2. The Domain Names and Registrars

The disputed domain names are <rejuva-epi.com>, <rejuvaepi.com.>, <rejuva-lift.com>, <rejuva-lite.com>, <rejuva-lymph.com>, <rejuvalymph.com>, <rejuva-tone.com>, <vivienne-talsmat.com> and <viviennetalsmat.com> which are registered with Tucows, and <rejuvaslim.com> which is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2006. On February 2, 2006, the Center transmitted by email to Tucows and eNom a request for registrar verification in connection with the domain names at issue. On February 2, 2006 and February 3, 2006, respectively, Tucows and eNom transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 4, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 11, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was May 1, 2006. The Response was filed with the Center on April 27, 2006.

The Center appointed Clive Duncan Thorne as the sole panelist in this matter on May 8, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On May 3, 2006, the Respondent filed an “Appendix” to the Response. The effect of the Appendix was to put in doubt the continued existence of two of the Complainant companies. The Respondent submitted that Rejuvaslim Limited was dissolved on January 31, 2006, and that Rejuvaslim International Limited was dissolved on May 2, 2006. These submissions, if true, would have had a fundamental effect on the basis of the Complaint.

The Panel was also concerned that it had not received annexes 3 and 4 to the Complaint.

The Panel therefore, on May 24, 2006, issued Procedural Order 1 which stated as follows:

(1) The Panel is prepared to admit the supplemental filings received from the Respondent on May 3, 2006, and from the Complainants on May 19, 2006, but orders that:

(a) The Complainants file an amended Complaint dealing with the matters the subject of the above documents. This amended Complaint must be filed with the Center no later than May 31, 2006.

(b) The Respondent file an amended Response in reply to the amended Complaint. This amended Response must be filed with the Center no later than June 7, 2006.

(2) The Panel allows the Complainant until May 31, 2006 to file annexes 3 and 4 to the Complaint if they wish to rely on them.

The Complainants, on May 31, 2006, filed an amended Complaint. In a covering email the Complainants indicated that the annexes to the Complaint remained the same except for annex 3, an amended version of which was attached. What appears to be annex 3 (although it is not marked as such) which accompanied the amended Complaint was a list of trademark rights.

The Respondent applied for an extension of time to file its amended Response on the grounds that the Respondent’s father-in-law had died on June 5, 2006. The Panel acceded to the request for an extension of time in the circumstances and granted an extension of time for the filing of the amended Response by June 23, 2006. An amended Response was received by the Center by email on June 23, 2006.

In the Panel’s view, there are no further outstanding procedural issues.

The effect of the amended Complaint is that the Complainants are reduced to two parties; Vivienne Talsmat, the First Complainant, and Rejuvalife Limited, the Second Complainant. The Panel therefore proceeds to decide this dispute on the basis of the amended Complaint and the amended Response and the parties are those set out in the amended Complaint.

 

4. Factual Background

According to the Complainants the First Complainant is the owner of the Rejuvalife businesses and is a shareholder in the Second Complainant. Together, the Complainants provide health and beauty services created and designed by the First Complainant.

The First Complainant has been trading under her own name, “Vivienne Talsmat”, since 1990 and the Second Complainant under the name “Rejuvalife” since 2000. The names “Vivienne Talsmat” and “Rejuvalife” have apparently been in continuous use since 2000 in relation to holistic weight loss technique designed by the First Complainant to rebalance the body. The services provided by the First and Second Complainant have for years been promoted through newspapers, magazines, catalogues, directories, journals, exhibitions and sponsorship of various events such as those for Volterre Wellness Corporation, the Imperial Cancer MacMillan Trust, as well as health journals and well-recognised websites including AOL.

The Complainant has apparently invested substantial finance in advertising, promotion and exhibition of the services provided. Between the years 2002 and 2004 the total annual sales for the Rejuvaslim companies rose from Ј4,000 to Ј400,000.

The Complainant also operates franchises of health and beauty treatments and products throughout the UK and elsewhere. The Complainant has used the prefix “Rejuva” since 1990 and purports to own a number of trademarks containing the prefix “Rejuva” including the marks REJUVALISM, REJUVAEPI and REJUVALITE. The Panel proceeds to deal with these trademark rights in more detail in considering the issues.

 

5. Parties’ Contentions

A. Complainant

(1) The Complainant submits that it owns the registered trademarks set out in the table of registered trademarks supplied with the amended Complaint, and that the domain names in question are identical to the trademarks in which the Complainant has rights.

(2) The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names because:

(a) The Respondent has no connection or nexus with any of the domain names or the prefix “Rejuva”.

(b) The Respondent is not commonly known by any of the disputed domain names or the prefix “Rejuva” and has acquired no trademark or service mark rights.

(c) There is no evidence that the Respondent’s use of the disputed domain names or the prefix is in connection with a bona fide offering of goods and services.

(d) The re-routing of web browsers to the Respondent’s web page “www.rejuvaslim.homestead.com” evidences the Respondent’s intention to divert the public from the Complainants’ to the Respondent’s own web page in order to create a false impression of association and/or to take commercial or otherwise advantage of the potential for confusion. The Respondent has his own web page “www.thermoslimmer.org” in which he provides his own health and beauty services.

(e) The domain names in dispute were registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name. The Respondent was clearly aware of the Complainants’ trademarks prior to his registration of the disputed domain names. They are being used intentionally to mislead internet users into visiting the Respondent’s website in the mistaken belief that they are visiting the Complainant’s websites.

(f) An entry by the Respondent dated February 24, 2005 on his website apparently displays the intention and readiness of the Respondent to profit from his use of the domain names by offering to sell them to the Complainant for Ј9,223.00. This allegedly shows that the domain names were registered primarily for the purposes of selling the domain name registration to the Complainant for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the domain names.

(g) The Respondent has as his primary purpose the disruption of the Complainant’s business. Entries on the website by the Respondent attempt to “warn” the public against using the services provided by the Complainant under the trademarks.

(h) The use and systematic registration of each of the ten domain names, the contents of which have no link to the ostensible purpose of the website, demonstrates that the domain names were registered in order to prevent the owner of the trademarks from reflecting the mark in a corresponding domain name and that the Respondent has engaged in a pattern of conduct which amounts to bad faith.

B. Respondent

(1) The Respondent does not accept that the disputed domain names are similar to or exactly the same as those that are held as trademarks by the Complainant. However, the Respondent registered the domain name <rejuvaslim.com> “with the full knowledge of the First Complainant as my wife and I had brought a Rejuvaslim franchise from her and operated under the trading name ’Rejuvaslim Doncaster’ with the full knowledge and support of the First Complainant”.

(2) The Complainant had registered the domain name <rejuvaslim.co.uk> for her own business whilst the Respondent had registered “rejuvaslim.com” to support his wife’s business which traded as “Rejuvaslim Doncaster”.

(3) The Respondent registered the remaining domain names “with a view to buying into those smaller franchised parts”. This was because owning those names would play an important part in the potential promotion of those franchises on search engines.

(4) The First Complainant and the Respondent have had an “unrecoverable (sic) breakdown of business relations” and the Respondent has used the “first registered domain” to host a forum for Rejuvaslim users.

(5) The first domain registered (presumably <rejuvaslim.com>) had been registered to support the franchise “Rejuvaslim Doncaster”. Subsequent domain names were bought believing that the Respondent would be carrying out business with other franchises being offered by the Complainant.

(6) There was a fall-out between the Respondent and the Complainant regarding the level of support which led to a dispute in relation to franchise monies.

(7) The disputed domain names were not acquired merely for the purpose of selling the domain names for valuable consideration in excess of the out of pocket costs directly related to the domain names. The Respondent pointed out to the Complainant that should she feel that she was in a position to refund the Ј9,223 in exchange for the franchise and equipment allegedly “stolen from our premises” then he would give her free of charge the domain name <rejuvaslim.com>.

 

6. Discussion and Findings

In order to succeed in its Complaint the Complainant has the burden of proof in showing that each element within the Policy is present. These are as follows:

(1) The domain name in dispute 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 was registered and is being used by the Respondent in bad faith.

The Panel proceeds to deal with each of these in turn:

A. Identical or Confusingly Similar

In its complaint the Complainant refers to a table of registered trademarks attached at Annex 3. A table was supplied with the amended Complaint but is not marked Annex 3. However, in view of the statement by the Complainant’s representatives that they were enclosing a revised version of Annex 3 and the only document received with the amended complaint was the table of registered trademarks the Panel is prepared to proceed on the basis that the table of trademarks is in fact the Annex 3 referred to. The table is a list of registrations of marks in Australia, Canada (under the European Community Trademark), Israel, New Zealand and United States. Having considered the table in conjunction with the domain names in dispute, the panel takes the view that there are corresponding European Community trademark registrations in respect of all the domain names in dispute incorporating the prefix “Rejuva” as follows:

Domain Names Trademark

<rejuvaslim.com> Rejuvaslim 004059937

001846906

Domain Names Trademark

<rejuva-epi.com> Rejuva-epi 004057089

<rejuvaepi.com> Rejuvaepi 004057089

<rejuva-lift.com> Rejuvalift 003219961

<rejuva-lite.com> Rejuvalite 003219995

<rejuva-tone.com> Rejuvatone 004057105

<rejuvalymph.com> Rejuvalymph 004057031

<rejuva-lymph.com> Rejuvalymph 004057031

In the Panel’s view it is unsatisfactory that the complainant has failed to exhibit copies of certificates of trademark registration. However, the Respondent accepts that the domain names that he holds are “similar to or exactly those that are held as trademarks by the Complainant.” In these circumstances the Panel is prepared to dispense with evidence of the Certificates of Registration and find for the Complainant under the first element of the Policy in respect of the eight disputed domain names commencing with the prefix “Rejuva”.

That leaves the two domain names incorporating the name Vivienne Talsmat; <viviennetalsmat.com> and <vivienne-talsmat.com>. The Panel is prepared to accept that the First Complainant, Vivienne Talsmat, has been trading under her own name since 1990. The Panel takes into account that the services provided by Vivienne Talsmat have apparently been widely promoted in the media referred to in the complaint. The Panel therefore also holds that the Complainant has unregistered trademark rights in the name “Vivienne Talsmat”, and that the domain names <Viviennetalsmat.com> and <Vivienne-talsmat.com> are identical or confusingly similar to the unregistered trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In order to succeed under the second element of the Policy, the Complainant has to show that the Respondent has no rights or legitimate interests in respect of the domain names. The Complainant’s prime submissions are that the Respondent has no connection or nexus with any of the domain names or the prefix “Rejuva” either in his own individual capacity or as a result of any business operated by him.

According to the Respondent, the position appears to be that at some stage he and his wife signed up for a franchise from the Complainant which allowed them to carry on a business in the name of “Rejuvaslim” in Doncaster. He was aware that the Complainant had registered the domain name <Rejuvaslim.co.uk> for her own business and he, on behalf of his wife, registered the domain name <Rejuvaslim.com> to support the franchised business. Indeed, he states that he registered <Rejuvaslim.com> to support the franchise “Rejuvaslim Doncaster” which had been bought from the First Complainant. There is no evidence that he registered this domain name with the consent of the Respondent.

Although the detail contained in the Response is sketchy, what appears to have happened is that the Complainants and the Respondent fell out in relation to the level of support allegedly given for the franchise. This led to a withholding by the Respondent of franchise payments due and the removal of franchised equipment supplied by the Complainant. It would therefore appear that the franchise, pending a resolution of the dispute, is effectively over. This would suggest that the Complainant would no longer have any entitlement to use a domain name incorporating the trademarks of the Complainant.

Although the Respondent’s registration of the domain name <Rejuvaslim.com> may have related to the franchise, this does not appear to account for the registration of the remaining domain names using the prefix “Rejuva” nor the two domain names using the name “Vivienne Talsmat”. The Respondent says that he registered the remaining domain names “with a view to buying into those smaller franchised parts. Owning those names would play an important part to the promotion of those franchises on search engines”.

In the Panel’s view this would not provide a legitimate reason for registering or using those domain names. As far as the domain name <Rejuvaslim.com> is concerned, the Respondent admits that there has now been an “unrecoverable breakdown of business relations” with the Complainants and that he has subsequently used the domain name “to host a forum for Rejuvaslim users”. In the Panel’s view there appears to be prima facie evidence of a lack of a legitimate rights or legitimate interests on the part of the Respondent to use the domain name <Rejuvaslim.com>. The name was registered to support the active franchise granted by the Complainant. The franchise it seems has now broken down irrecoverably and there is no evidence from the Respondent to show a continuing license or consent from the Complainant as trademark owner to use the domain name <Rejuvaslim.com> or the other domain names in dispute.

In these circumstances, the Panel finds for the Complainant in respect of this element of the Policy and decides that the Respondent has no rights or legitimate interest in the domain names in dispute.

C. Registered and Used in Bad Faith

In support of this contention the Complainant relies upon entries in the guest book of the Respondent’s website to which domain names are directed, which suggests that domain names are registered in order to prevent the complainant from reflecting the mark in the corresponding domain name.

There appears to be some confusion on the part of the Complainant’s representative as to what the “Annex 3” referred to in the amended Complaint is. In the amended Complaint “Annex 3” is first referred to as a table of registered trademarks, whereas in section C of the amended Complaint the Complainant appears to refer to Annex 3 as the entry in the guest book of the Respondent’s website. This refers to an apparent intention and readiness of the Respondent to profit from his use of the domain names by offering to sell them to the Complainant for Ј9,223.00. The Panel has not been supplied with this document but what it has been supplied with is a four page document headed “Welcome to Rejuvaslim” which appears to be an extract from the Respondent’s website. The document is not marked with any reference to an Annex number. Moreover it does not appear to refer to an offer for sale of the domain names. The document states that the Respondent’s site is owned and operated by Richard Wilson, a former Rejuvaslim franchise operator and that:

“This site is dedicated to the allowance of free speech to either former or current franchise owners regarding experiences in the dealings with Vivenne Talsmat or of their client’s who may wish to add views regarding a success of the treatment or diet plan”.

It then continues with references to “poor experiences” with the franchise owner Vivienne Talsmat and how she allegedly responded to concerns that clients were not losing weight, which was to “turn up at my premises with several men and remove the equipment”.

Overall the website appears to be critical of Vivienne Talsmat and her Rejuvalism business generally.

In his Response the Respondent submits that the domain names other than “Rejuvaslim.com” were bought on the basis that he would be carrying out business with other franchises being offered by the Complainant, and that the Complainant’s had “no interest in the rest of the domain names on the Complainant’s list”.

He also submits that the purpose of the forum referred to in B above was to discover whether any other individuals had had similar experiences with the Complainant.

The Panel considers that it is not in a position to decide whether the domain name <Rejuvaslim.com> was originally registered in good faith to support the Respondent’s or his wife’s franchise. There is though no evidence that it was registered legitimately with consent. However, the Respondent accepts that the franchise is over. In the Panel’s view the continued use of “Rejuvaslim.com” for the purposes of maintaining a forum for critical comment about the Complainants represents use of the domain name in bad faith.

Further to the question of registration, there have been previous decisions suggesting that, in certain circumstances, where registration of a domain name occurs in the context of a retail sales arrangement between the respondent and the complainant, and that arrangement comes to an end, a subsequent failure by the respondent to transfer the registered domain name may render what was otherwise a bona fide registration negative. See for example UVA Solar GmbH & Co K.G. v. Mads Kragh, WIPO Case No. D2001-0373, and Exel Oyj v. KH Trading, Inc., WIPO Case No. D2004-0433.

In the present circumstances, as noted, there is no evidence before the Panel that the initial registration of the disputed domain name occurred with the legitimate consent of the Complainant pursuant to the franchise arrangement or otherwise. However assuming that such consent could reasonably be implied from the terms of the franchise arrangement, it would be equally reasonable to assume that it existed solely for the duration, and that the termination of the arrangement would require the subsequent transfer of the Domain name to the Complainant.

As noted, the Respondent accepts that the franchise arrangement with the Complainant has come to an end. Thus in the absence of a transfer of the Domain name to the Complainant, the Respondent’s failure to return the Domain name may be taken as a basis for concluding that the registration lacks good faith. On balance, the Panel so concludes, and for the reasons outlined above, the Panel finds the disputed domain <Rejuvalism.com> to be registered in bad faith.

In the case of the other domain names in dispute, the Panel considers that the reasons given for registration of these domain names which the Respondent would have been aware of reflected the Complainant’s trademark rights ie. “for the purpose of buying into those smaller franchise parts” (which would have been in competition with the activities of the Complainant) constitutes bad faith.

Accordingly the Panel findsthat the domain name <Rejuvaslim.com> is registered and being used by the Respondent in bad faith, as are the remaining domain names.

 

7. Decision

For all the foregoing reasons in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the names:

<rejuvaslim.com>;<rejuva-epi.vom>;
<rejuvaepi.com>;
<rejuva-lift.com>;
<rejuva-lite.com>;
<rejuva-tone.com>;
<rejuvalymph.com>;
<rejuva-lymph.com>;
<viviennetalsmat.com>;
<vivienne-talsmat.com>.

be transferred to the Complainant.


Clive Duncan Thorne
Sole Panelist

Dated: July 5, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0133.html

 

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