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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Medestea Internazionale S.r.l. v. Chris Gaunt

Case No. D2003-0011

 

1. The Parties

The Complainant is Medestea Internazionale S.r.l., 10128 Turin, of Italy, represented by Freehills of Melbourne, Australia.

The Respondent is Chris Gaunt, of Melbourne, VIC 3016, Australia, also known as Cellasene Gold, of South Yarra, VIC 3141, Australia.

 

2. The Domain Names and Registrars

The disputed domain names <cellasene.com> and <cellasenegold.com> ("the Domain Names") are registered with Network Solutions, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 3, 2003. On January 8, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the Domain Names at issue. On January 14, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain name <cellasene.com> and providing the contact details for the administrative, billing, and technical contact (in each case the relevant contact is the Respondent). In the case of the domain name <cellasenegold.com> the verification stated that the registrant is Cellasene Gold, of 201 Chapel Street, South Yarra, Vic. 3141, Australia, that Internet Name Group of Melbourne, Australia is the administrative and billing contact and that VeriSign, Inc. of Dulles, USA is the technical contact. The Center verified that 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 "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 January 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2003.

The Center appointed Christopher P. Tootal as the sole Panelist in this matter on February 14, 2003. 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.

 

4. Factual Background

(a) The Complainant owns a large number of trade marks incorporating CELLASENE in a plain rectangular frame or against a more complex, pictorial background ("the Trade Mark"). An example of the former kind of registration is Australian Trade Mark No. 786,576, dated February 25, 1999, and of the latter kind of registration Australian Trade Mark No. 756,987 dated March 12, 1998.

(b) The domain name <cellasene.com> was registered on October 30, 1998, in the name of P & M Enterprises Pty. Ltd. It was transferred to the Respondent on November 11, 2001.

(c) The domain name <cellasenegold.com> was registered on April 22, 2002, in the name of Cellasene Gold, of 201 Chapel St., South Yarra, Victoria 3141, Australia.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts, inter alia, as follows:

(i) The Complainant is an internationally well-known company which is active in the field of cosmetics and dietetic products. The Complainant has extensively promoted its CELLASENE product internationally and has enjoyed both strong sales and extensive publicity of its product.

(ii) CELLASENE is an invented word that does not appear in any dictionary known to the Complainant. The word CELLASENE has been made famous by the Complainant’s substantial marketing and promotional campaign surrounding the launch of its CELLASENE product. Due to the uniqueness of the word, it is not one that other traders would legitimately choose unless seeking to create an impression of an association with the Complainant.

(iii) In 2001, the Complainant launched a product range using the trademark CELLASENE GOLD. It has a pending trademark application in Italy for the trademark CELLASENE GOLD, applied for in 2000. Based upon the strong commercial success of this product the Complainant intends to launch this product in other countries also, including Australia.

(iv) The Respondent has used the domain name <cellasene.com> as a URL to resolve to a website on which it has offered the Complainant’s products for sale. At no stage has the Complainant authorised this conduct, supplied its products to the Respondent, or had any distributorship agreement with the Respondent.

(v) The Respondent has only "used" the domain name <cellasenegold.com> as a URL to resolve to a website page displaying a standard "Under Construction" webpage.

(vi) P&M Enterprises Pty Ltd registered the domain name <cellasene.com> on October 30, 1998. Prior to this date the Complainant had achieved significant sales of its CELLASENE trademarked product overseas and had recently commenced publicity and sales of its CELLASENE products into Australia, for example:

- an advertisement in Cairns Sun (October 28, 1998);
- an article in The Australian (a national broadsheet) on October 30, 1998, (this article refers to the fact that a national television program, Today Tonight, had publicised this product, and that sales had commenced two days earlier with a dramatic public response);
- an article in The Australian Women’s Weekly, November 1998 edition (the November edition is routinely made publicly available during the preceding calendar month).

(vii) The Complainant wrote to P&M Enterprises in March 2000, demanding that the <cellasene.com> domain name be transferred to it. During the course of intervening correspondence the Complainant repeated its demands that the domain name be transferred to it without payment to the Respondent. On October 26, 2001, P&B Commercial Lawyers, acting for P&M Enterprises wrote to the Complainant’s Italian legal representatives informing them that they were: (1) "instructed by Mr. Chris Gaunt"; and that (2) P&M Enterprises Pty Ltd "is purely a nominee for Mr. Gaunt and others. As P&M does not wish to be involved in these negotiations it has requested that Mr. Gaunt take a transfer of the domain name and that is being actioned immediately." [The letter went on to point out that the Complainant had been fully aware of the fact that the Respondent’s website had been used for selling genuine CELLASENE product world-wide, and that the Complainant, having seen the Respondent’s business build, could not then unilaterally "withdraw" its consent – Panel].

(viii) On January 25, 2002, P&B Commercial Lawyers wrote a "without prejudice" letter to the Complainant’s Italian legal representatives. It purported to offer to sell a "business" comprising of assets of the <cellasene.com> domain name, customer lists and copyright in the website. A price of US$200,000 was nominated. This amount is clearly greater than the Respondent’s out of pocket costs associated with the domain name and was simply an attempt to "dress-up" the sale of the domain name.

(ix) The Respondent’s website located at the URL "www.cellasene.com" suggests that it is being operated by the Complainant, as evidenced by the following:

(a) the Complainant’s framed CELLASENE trademark is prominently displayed on the website, together with a statement that the trademark is registered by the Complainant. This is typical of what a customer would expect from the "official" website.

(b) There is no disclaimer on the website informing the customer who accesses the website that the website is not associated with the Complainant.

(c) The history of the development of Cellasene is explained beneath a "Product Information" heading, which further creates the impression of an official website.

(d) Supply of CELLASENE product is offered on a worldwide basis, with payment in US dollars – again this indicates to a customer that it is the official website of the manufacturer of CELLASENE products.

(x) On the first "page" of the "cellasene.com" website is a prominent colourful link to the "vitaminzone.com.au" website (a further link is provided along the top "index"). A person going to that website and looking for the CELLASENE product is presented with an alternative treatment for cellulite, namely the SUNSPIRIT product which is not associated with the Complainant. This product is also offered at a price substantially less than Cellasene. The Respondent is a "founding director" of the company operating this website.

(xi) The actions of the Respondent have prevented the Complainant from operating a website using the domain name that most of its international customers would expect to find it at. Moreover, a customer accessing that website would, from the content of that website, expect that it was dealing with the Complainant or its authorised representative.

(xii) So far as concerns the domain name <cellasenegold.com>:

(a) it is registered to "CELLASENE GOLD" of 201 Chapel Street, South Yarra, Victoria, Australia, 3141.

(b) The information that is provided on the "Satisfaction Guarantee" page of the "cellasene.com" website is that damaged goods should be returned to 201 Commercial Road, South Yarra, 3141, Melbourne, Australia. The only difference between these two addresses is "Chapel Street" compared with "Commercial Road."

(c) On September 17, 2002, Freehills wrote to Cellasene Gold at 201 Chapel Street, South Yarra, Victoria, 3141. This letter was returned to the offices of Freehills on September 23, 2002, unable to be delivered.

(d) The Respondent has deliberately selected a fictitious name and address which demonstrates that it does not wish to be identified.

(e) The Complainant commenced sales of a CELLASENE GOLD product in Italy and Spain in 2001.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, his lawyers sent a fax to Freehills on January 8, 2003 (after they had received a copy of the Complaint from Freehills), stating, inter alia, "We advise that the address for service nominated by our office is in relation to both of the domain names in dispute."

Then, on February 3, 2003, the same lawyers wrote to Freehills stating that they act for the Respondent in relation to this administrative proceeding and that the Respondent does not intend to serve a Response.

 

6. Discussion and Findings

At the commencement of these proceedings the Complaint put forward circumstantial evidence connecting the domain name <cellasenegold.com> with the Respondent. The lawyers acting for the Respondent (see previous paragraph) seem to confirm that the Respondent is the owner of both of the Domain Names, and the Panelist so finds.

So far as concerns the merits in this case, the onus is, of course, on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(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 domain name <cellasene.com> is manifestly identical to the Complainant’s trade mark CELLASENE. The Complainant also has a pending Italian trade mark application for CELLASENE GOLD, to which the domain name <cellasenegold.com> is identical. For the purposes of element (i) of paragraph 4(a) of the Policy the Panelist prefers to find that the latter domain name is confusingly similar to the trade mark CELLASENE – all the addition of "gold" achieves is a suggestion that "cellasenegold" is a superior version of CELLASENE.

B. Rights or Legitimate Interests

For the purposes of element (ii), the Panelist must be satisfied that none of three circumstances enumerated in paragraph 4(c) of the Policy apply to the Respondent. In the present case, it might have been open to the Respondent to demonstrate that his conduct (and that of the original registrant of the domain name <cellasene.com>) fell within the following circumstance:

"before any notice to you of the dispute, your use of … the domain name in connection with a bona fide offering of goods or services."

However, the Respondent has deliberately elected not to file a Response.

The Complainant has shown that the Respondent’s website was set up without its consent and, since March 2000, has continued to be used in the face of the Complainant’s objections. In a letter dated March 2, 2000, the Complainant made clear that it was happy for the Respondent to continue to sell CELLASENE products on the Internet, but not using the domain name <cellasene.com>. In the Panelist’s opinion, the Respondent was not engaged in a "bona fide offering of goods" because, although genuine goods of the Complainant were on offer, the use of the domain name and the general set-up of the website created the impression that there was a relationship, such as that of a distributorship, between the parties.

So far as the domain name <cellasenegold.com> is concerned, this was registered less than 12 months ago at a time when the Respondent was aware of the Complainant’s objections to the <cellasene.com> website – it is evident that none of the circumstances set out in paragraph 4(c) of the Policy apply, and the Respondent has not attempted to justify his actions.

Accordingly, the Panelist finds that element (ii) above has been established in relation to both the Domain Names.

C. Registered and Used in Bad Faith

So far as element (iii) is concerned it is sufficient that the Complainant demonstrates that one of the four circumstances mentioned in paragraph 4(b) of the Policy applies.

Paragraph 4(b)(iv) of the Policy can be paraphrased in the third person as follows:

"by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [his] 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 [Respondent’s] web site or location, or of a product or service on [Respondent’s] web site or location."

The Respondent’s website is clearly intended to attract members of the public who have an interest in cellulite reduction. That the domain name <cellasene.com> was registered and used in bad faith within the terms of paragraph 4(b)(iv) is evidenced by:

(i) the clear implication that the Respondent’s website is an official outlet for the Complainant’s products, operating with the Complainant’s consent (see para. 5A.(ix) above); and

(ii) the fact that a competitive product is offered on another website linked to it (see para. 5A.(x) above).

The domain name <cellasenegold.com> was registered soon after the Complainant launched its CELLASENE GOLD product and in the face of the Complainant’s objections to the Respondent’s use of the <cellasene.com> website. This was manifestly a spoiling tactic, denying the Complainant the opportunity to register this domain name itself. In such circumstances, a finding of bad faith is inevitable.

For the above reasons the Panel finds that the Domain Names were both registered and are being used in bad faith.

 

7. Decision

In the light of the findings in paragraph 6 above, the Panel concludes that

- the domain names <cellasene.com> is identical to the trade mark CELLASENE of the Complainant;
- the domain name <cellasenegold.com> is confusingly similar to the trade mark CELLASENE of the Complainant;
- the Respondent has no rights or legitimate interests in either of the domain names;
- the domain names have been registered and are being used in bad faith.

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <cellasene.com> and <cellasenegold.com> be transferred to the Complainant Medestea Internazionale S.r.l.

 

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Christopher P. Tootal
Sole Panelist

Dated: February 28, 2003