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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Saguna Food-und Non-Food-Vertriebs GmbH v. Bolu Akindoyin and Adam Abd-Rabbou trading as Adamstyle Productions

Case No. D2000-1665

 

1. The Parties

The Complainant is Saguna Food-und Non-Food-Vertriebs GmbH, Teutoburger Str. 5, D-33604 Bielefeld, Germany. The Complainant is represented by: Grant Spencer Caisley & Porteous, New Garden House, 78 Hatton Garden, London EC1N 8JN, United Kingdom.

The Respondent is Bolu Akindoyin and Adam Abd-Rabbou trading as Adamstyle Productions, 3 Manor Close, Milton Keynes Village, Milton Keynes, Buckinghamshire MK10 9AL, United Kingdom.

 

2. The Domain Name And Registrar

The Domain Name at issue is <silicolskin.com>.

It is registered with: CORE Internet Council of Registrars, World Trade Center II, 29 route de Prй-Bois, CH-1215 Geneva, Switzerland.

 

3. Procedural History

A hard copy of the Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on November 30, 2000. An e-mail version followed on December 1, 2000. The Center acknowledged receipt of the Complaint on December 4, 2000.

On December 7, 2000 the Center issued a Complaint Deficiency Notice informing the Complainant that Network Solutions Inc. (NSI) was not the Registrar of the Domain Name at issue. On December 8, 2000 CORE Internet Council of Registrars confirmed that the domain name <silicolskin.com> was registered with it. CORE also confirmed that the Registrant of the domain name is: Adamstyle Productions (template COCO-704360), adam@whoops.co.uk, 3 Manor Close, Milton Keynes Village, Milton Keynes, BUCKS MK10 9AL. CORE also confirmed that the Administrative Contact, Technical Contact, and Zone Contact is: Steve Procter, (COCO-21639), sales@easily.co.uk, Phone/fax: +44 172 787 44 64. CORE further confirmed that the domain name in question was registered on September 1, 2000, and that the domain name is currently active ("production").

On December 7 and December 11, 2000 an Amended Complaint was filed with the Center by e-mail and hard copy respectively. On December 13, 2000 the Center determined that the Complaint satisfied the Formal Requirements of the Policy, Rules and Supplemental Rules; that payment of the required sum had been made by the Complainant; and that an administrative proceeding had been commenced against the Respondent. The formal date of the commencement of the administrative proceedings was fixed as December 13, 2000. The Respondent was notified by the Center of the proceedings on that date. A deadline of January 1, 2001 was fixed for its Response.

The Respondent failed to file a timely Response. The Center issued a Notification of Respondent Default on January 5, 2001.

On January 16, 2001 the Center notified the Parties that an Administrative Panel composed of a single member, Dr. Kamen Troller, had been appointed. The Center further notified the Parties that the Panellist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. Absent exceptional circumstances, the Panellist was required to forward its decision to the Center in accordance with Paragraph 15 of the Rules by January 29, 2001.

The Panellist examined all notifications of the Center, and the Complaint, and finds that they comply with the formal requirements of the Rules and Supplemental Rules. He further finds that the Center has adhered to the Policy, Rules and Supplemental Rules throughout this proceeding, and that the Administrative Panel was properly constituted.

 

4. Factual Background

The Complainant, Saguna Food-und Non-Food-Vertriebs GmbH, is a German corporation with its principal place of business in Bielefeld, Germany. Since 1991 the Complainant has sold a skin care preparation for the treatment of blemishes under the name "Silicol Skin".

The Complainant is the owner of the trademark "SILICOL", registered in the U.K. on December 20, 1993 as Trademark Numbers 1557632 (Class 3) goods (skin care preparations); and number 1557633 Class 5 Goods (pharmaceutical products). The Complainant is also the holder of other trademarks incorporating the term "Silicol".

The Respondent is Adamstyle Productions, 3 Manor Close, Milton Keynes Village, Milton Keynes, Buckinghamshire MK10 9AL, United Kingdom. Although the Registrant is Adamstyle Productions, correspondence from the Respondent prior to the initiation of this proceeding was signed by Bolu Akindoyin and Adam Abd-Rabbou, and appeared on the letterhead of Akinrab Co-operation, at the above address, and from 2 Chilingham Court, Shenley Brooke End, Milton Keynes, MK5 7FH United Kingdom. The names Adamstyle and Akinrab appear to be names derived from the names Akindoyin and Adam Abd-Rabbou. These facts may explain why the Respondent is identified as "Bolu Akindoyin and Adam Abd-Rabbou trading as Adamstyle Productions".

The Respondent has not provided proof of a trademark registration for "silicol" or "silicolskin" in any jurisdiction.

 

5. The Parties’ Contentions

The Complainant asserts that: (1) The domain name <silicolskin.com> is "substantially identical" to the trademark "SILICOL" in which the Complainant has rights and is "identical to the Complainant's unregistered mark SILICOL SKIN which it has used in the United Kingdom since 1991"; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and that (3) the domain name was registered and is being used in bad faith.

In accordance with paragraph 4(i) of the Policy, the Complainant requests the Administrative Panel to issue a decision that the domain name <silicolskin.com> be transferred to the Complainant.

The Respondent is in default and has thus not denied any of the allegations made by the Complainant.

 

6. Discussion And Findings

Pursuant to paragraph 4(a)(i–iii) of the Policy, Saguna Food-und Non-Food-Vertriebs GmbH as Complainant must prove that each of the following three elements are present if it is to prevail:

(i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

a. Identical or confusingly similar

The Complainant asserts that the domain name <silicolskin.com> is "substantially identical to the Complainant’s United Kingdom registered trade marks comprising or incorporating SILICOL and is identical to the Complainant’s unregistered trade mark SILICOL SKIN which it has used in the United Kingdom since 1991…" The Respondent has not denied this allegation.

The combination of a dominant (registered) name with other terms added to the protected mark is a reoccurring problem in domain name disputes. (Footnote 1) As a general rule, for intellectual property purposes, "two marks may be considered to be identical or confusingly similar if the distinctive part of the designation is identical, but a non-distinctive addition is made." (Footnote 2) In the domain name context, a similar rule applies.

Applying this same criteria to the facts of this case leads the Panel to a finding of confusing similarity. The Respondent's addition of the word "skin" to the registered mark "SILICOL" will inevitably lead to consumer confusion, not only because the word added ("skin") relates specifically to the Complainant's business, but also because the domain name is identical to the name of the product sold since 1991 by the Complainant. The addition of the word "skin" to the mark "SILICOL" is a non-distinctive addition and confusion is the inevitable result.

The Respondent has itself provided support for the Panel’s finding. Exhibit 8 of the Complaint is a letter from the Respondent acknowledging that it received numerous e-mail inquiries about the Complainant's product once a contact e-mail address was placed on its website. Two such e-mails are appended to its letter and made a part of Exhibit 8.

In light of the evidence presented by the Complainant, the Panel finds that <silicolskin.com> is confusingly similar to the Complainant's UK mark.

b. Rights or legitimate interests

Paragraph 4(c) of the Policy defines the circumstances required for the Respondent to demonstrate "rights to and a legitimate interest in the domain name". The Respondent is only required to demonstrate any one of the following circumstances (in particular and without limitation) to prove its rights to or legitimate interest in the domain name:

(i) before any notice to you of the dispute, your 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; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant argues that the Respondent has no legitimate interest in the domain name <silicolskin.com> because: (1) before the Respondent was given notice of this dispute, the Respondent had not made any use of, or demonstrable preparations to use, the domain name or a name corresponding with it in connection with a bona fide offering of any goods or services; (2) the Respondent has not been commonly known by the domain name, and (3) the Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark at issue.

Paragraph 4(c)(i) of the Policy requires the Complainant to demonstrate that the domain name in question is not being used in connection "with a bona fide offering of goods or services". The Complainant has succeeded in making a prima facie case that there has been no bona fide offering of goods or services at this address. The Panel finds Exhibit 8 of the Complaint persuasive in this regard. Exhibit 8 reveals that the Respondent placed a contact e-mail address on its <silicolskin.com> website, but Exhibit 8 also evidences that the website was only used to demonstrate to the Complainant that it would lose customers if it did not purchase the domain name from the Respondent. This does not constitute a bona fide offering of goods or services. This is indeed far from a bona fide use. The Respondent only used the website to demonstrate to the Complainant the confusion that potential customers would suffer if the Complainant did not purchase the domain name at issue.

Lack of bona fide use is further confirmed by the Panel’s unsuccessful attempt to visit the website on several occasions. The Panel found that the website is not being used by the Respondent in connection with a bona fide offering of goods or services.

Paragraph 4(c)(ii) of the Policy requires the Complainant to demonstrate that the Respondent is not commonly known by the name at issue. The Complainant states that the Respondent has not been commonly known by the domain name, and this assertion has not been rebutted by the Respondent. Again, the Panel finds that the Complainant has made a prima facie case that the Respondent does not meet the requirements of this provision. The Panel further observes that the Respondent’s name is not at all similar to the domain name in question, and that when given an opportunity to describe what rights, if any, it may have in the domain name by filing an answer to the Complaint, the Respondent chose not to do so. The Panel concludes that the Respondent has not been commonly known by the domain name in question and that the Respondent has failed to satisfy the requirements of 4(c)(ii) of the Policy.

Paragraph 4(c)(iii) of the Policy places the burden on the Complainant to demonstrate that the Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel’s conclusion is similar to that of 4(c)(i) above. The Complainant has alleged, and the Respondent has not denied, that the domain name is not being used for a legitimate non-commercial use. The Complainant has made a prima facie showing of non-use which the Respondent has not rebutted. As already noted, Exhibit 8 strengthens the Panel's conclusion that the Respondent has not made a legitimate non-commercial or fair use of the domain name. The Complainant’s position is further confirmed by the Panel’s unsuccessful attempts to visit the website. The Panel concludes that the website is not being used for a legitimate non-commercial or fair use.

The Panel concludes that in each instance the Complainant has made a prima facie case that there has been no legitimate use of the domain name by the Respondent and that the Respondent has not rebutted this case. The Panel’s finding that the Respondent has not made a legitimate us of the domain name at issue is supported by one of the same elements that are present in its analysis of bad faith. The Panel finds it significant that the Respondent registered the domain name 10 days after the Complainant had begun to receive important publicity about its product (Exhibit 1), and that it tried to sell the domain name to the Complainant approximately 10 days after the name was registered.

The Panel concludes that the Respondent has not made legitimate use of the domain name.

c. Bad faith

Paragraph 4(b) of the Policy sets forth a list of circumstances which shall be evidence that the registration and use of a domain name is in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.

The Complainant relies on the first element, alleging that the domain name was registered and used in bad faith because circumstances indicate that the "Respondent registered the domain name primarily for the purpose of selling it to the Complainant, who is the owner of the trade mark comprising the domain name, for valuable consideration in excess of documented, out-of-pocket expenses."

The evidence supports the Complainant's allegation. The Respondent registered the domain name on September 1, 2001 (Exhibit 7), only 10 days after the Complainant's product was featured in an article in the Daily Mail (Exhibit 6). Correspondence from the Respondent dated September 22, 2000 reveals that the Respondent contacted the Complainant on or about September 12, 2000 to try to sell the domain name to the Complainant (Exhibit 8). There is no doubt that the Respondent's primary purpose in registering "silicolskin.com" was to sell this domain name to the Complainant at the earliest possible date. This conclusion is confirmed by Exhibit 13 which is a letter from the Respondent dated November 23, 2000 demanding Ј 1,000 for the sale of <silicolskin.co.uk> and <silicolskin.com>.

It should be noted that the Respondent's offer to sell these two domain names for Ј 1,000 came two months after the Respondent tried to sell these names to the Complainant as part of a larger web design package. Exhibit 8 contains a proposal from the Respondent offering the Complainant:

"[…] the legal ownership of both "silicolskin.co.uk" and "silicolskin.com", coupled with a fully functioning method of marketing and promoting the company's name and products across the internet not to mention provide the opportunity to sell Saguna's products world-wide online via a simple and effective method."

Although the Respondent was, not surprisingly, careful not to specify a price for the sale of this "package of services", this "package deal" approach is an all-too-familiar ruse for forcing a trade mark holder to pay more for the purchase of a domain name, and making it more difficult for the Complainant to prove that the offering price for the domain name was in excess of documented out-of-pocket expenses. For these reasons, the Panel would have made a finding of "bad faith" even had Respondent not subsequently demanded Ј 1,000 for the sale of <silicolskin.co.uk> and <silicolskin.com>.

The Panel concludes that the domain name <silicolskin.com> was registered and used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

 

7. Decision

The Panel decides 1) that the domain name <silicolskin.com> is confusingly similar to Complainant’s trademark "SILICOL", 2) that the Respondent has no rights or legitimate interests in respect of the domain name, and 3) that the domain name has been registered and is being used in bad faith by the Respondent.

Pursuant to paragraph 4(i) of the Policy and pursuant to paragraph 15 of the Rules, the Panel orders that the disputed domain name "silicolskin.com" be transferred to the Complainant.

 

 

Dr. Kamen Troller
Sole Panellist

26 January, 2001

 

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Footnotes:

1. See e.g., Telia AB v. Alex Ewaldsson and Birgitta Ewaldsson, WIPO Case No. D2000-0599,

Digital City, Inc. v. Smalldomain, WIPO Case No. D2000-1283, Yahoo! Inc. v. Eitan Zviely et. al., WIPO Case No. D2000-0273.

2. Appleton and Troller, Domain Name Arbitrations: A Review of Selected Decisions, ASA Bulletin (4-2000), at 725.