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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Leonard Hardy v. Amrit Resort

Case No. D2008-0698

1. The Parties

The Complainant is Leonard Hardy, Gharb, Malta, represented by Rimer & Mathewson LLP, United States of America.

The Respondent is Amrit Resort, Kathmandu, Nepal.

2. The Domain Name and Registrar

The disputed Domain Name <colonix.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2008. On May 6, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 6, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 May 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2008.

The Center appointed W. Scott Blackmer, Lynda J. Zadra-Symes and Soh Kar Liang as panelists in this matter on July 2, 2008. The Panel finds that it was properly constituted. Each member of 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 July 10, 2008, the Center issued Administrative Panel Procedural Order No. 1, asking the Complainant to submit evidence concerning the use of the unregistered COLONIX mark online and in Nepal before October 18, 2002.

4. Factual Background

The Complainant is an individual who gives as his address a postal box in Malta. However, the TARR database operated by the United States Patent and Trademark Office (USPTO) identifies the Complainant as a Canadian citizen residing in Henderson, Nevada, United States of America as of April 6, 2008.

The Complaint asserts that since 1998 the Complainant or his “predecessor in interest, DrNatura.com, Inc., have been offering for sale on a world-wide basis quality herbal supplements for intestinal cleansing marketed under the trademark COLONIX.” The Complaint states further that the “Complainant is the owner of the COLONIX trademark for herbal supplements for intestinal cleansing, and Complainant licenses the use of this trademark to his exclusive licensee, DrNatura.com, Inc.”

The USPTO records attached to the Complaint, and those available online from the USPTO, indicate that the COLONIX trademark, U.S. Registration No. 2866862 (registered July 27, 2004, showing first use in commerce on April 1, 1998) was first granted to DrNatura.com Inc., a Florida corporation, and subsequently assigned to the Complainant in 2006. The USPTO database currently shows that the trademark was recently assigned to DrNatura.com, Inc., a Nevada corporation, in April 2008. The April 6, 2008 printout from the USPTO TARR database submitted with the Complaint shows the Complainant as the last owner of record, but that database now lists the Nevada corporation, DrNatura.com, Inc., as the last owner of record of the COLONIX trademark.

The Complaint does not clarify the Complainant’s relationship with the two “DrNatura.com” corporations. However, the online business entity database operated by the Florida Department of State lists DrNatura.com Inc. (the company that originally obtained the trademark registration) as a corporation established in Florida on February 28, 2003, with the Complainant as its only listed officer and registered agent. The database also shows the status of the corporation as “inactive” following its voluntary dissolution on January 24, 2006. The online business entity database operated by the Nevada Secretary of State lists DrNatura.com, Inc. as an active Nevada corporation established on June 1, 2005, with the Complainant as its only listed officer and director; the Complainant’s address is given as a post office box in Las Vegas, Nevada.

The United States of America trademark was used as the basis for a WIPO Madrid Protocol trademark registration in the name of the Complainant on June 29, 2006 (International Registration Number 903276), with designations for Bulgaria, China, Croatia, the European Union, Japan, Romania, Russian Federation, Switzerland, Turkey, and Ukraine. Subsequently, the trademark was registered to the Complainant in Australia as well (Trade Mark No. 1174375), based on the International Registration.

The Complaint states that COLONIX intestinal cleansing products are sold primarily through “the DrNatura.com website” at “www.drnatura.com”. This multipage, English-language website does not appear to mention the Complainant. The copyright notice on the website asserts copyright from 1998-2008 in the name of “DrNatura.com Inc.”, which was the name of the Florida corporation that apparently existed only from February 2003 to January 2006. The “Contact Us” page of the website gives a Nevada shipping address and both toll-free and Florida telephone numbers.

The Complaint asserts that the Complainant and his “predecessor in interest” have spent “millions of dollars” to promote the COLONIX brand, resulting in sales exceeding 90 million USD “in approximately 90 countries, many of which are located in Asia.” The Complaint attaches reviews appearing as of April 2008 on two health-related websites (both operated by NHT Marketing & Publishing, apparently from the United States of America) ranking COLONIX as the preeminent line of colon cleansing products. The Complainant also demonstrates that the leading search results on Google for the query “colonix” relate to the DrNatura.com COLONIX products.

In response to the Panel’s order seeking further evidence concerning the use of the COLONIX mark internationally and online at the time the Domain Name was registered, the Complainant furnished archived website pages and his own stored files displaying advertisements that appeared from April-December 2002 on three herbal-therapy websites, “www.drnatura.com” (operated by the Complainant, according to his declaration, and published in English-, Polish-, and Hungarian-language versions), “www.naturalhealingtoday.com” (in English and Polish), and “www.gifam.org”, a website operated by the Complainant’s spouse.

The Respondent, a health resort hotel in Nepal featuring herbal medicine and colonic treatments, registered the Domain Name on October 18, 2002. The Complainant furnished an archived copy of the website to which the Domain Name resolved on May 27, 2007. At that time, the Domain Name delivered Internet users to the website of Amrit Resort Nepal at “www.spa-nepal.com”, which featured “Colonic cleaning methods using Dr. Richard Anderson’s passive Colema system and a holistic approach.” The website also indicated that the resort was in danger of closing and reported that the owners “desperately need investors.” Indeed, the home page of the website headlined the plea, “HELP NEEDED Investors are Welcome”. The same text is found on the last archived version of the website, dated July 1, 2007, which is available through the Internet Archive’s Wayback Machine at “www.archive.org”.

The Domain Name currently resolves to a parking website at “www.spa-nepal.com”. The website has a search feature and “Sponsored Listings,” which are links to third-party advertisers chiefly concerned with travel to Nepal.

5. Parties’ Contentions

A. Complainant

The Complainant argues that COLONIX is an arbitrary, well-known trademark with no dictionary meaning and that the Respondent has no rights or legitimate interests in using it as the Domain Name.

The Complainant alleges that he has used the trademark since 1998 and that the only reason for the Respondent to have registered the Domain Name in 2002 was to make an unlawful use of the mark to attract consumers to the Respondent’s hotel for commercial gain, confusing them as to the source of the Respondent’s “spa/colon cleansing services.” The Complainant also argues that the Respondent must have registered the Domain Name to prevent the Complainant from reflecting the mark in a corresponding domain name. The Complainant further contends that the Respondent’s use of the Domain Name has had the effect of disrupting the business of the Complainant, by causing Internet users to believe that the Complainant or DrNatura.com “sponsored or endorsed” the Respondent. The Complainant concludes that the Respondent registered and used the Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:

(i) the Domain Name is identical or confusingly similar to a trademark 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.

Under paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

According to the USPTO database, the Complainant is not the current owner of the registered United States trademark COLONIX, as he claims to be, although it appears that he is an officer and director of the Nevada corporation that USPTO lists as the current registrant. In any event, the Complainant is the current owner of record of the International Trademark Registration for COLONIX.

Disregarding the “.com” suffix necessary for Internet DNS addressing, the Domain Name is identical to the Complainant’s registered COLONIX trademark. Thus, the Complainant has established the first element of the Complaint.

B. Rights or Legitimate Interests

It is undisputed that the Respondent was not authorized to use the Complainant’s COLONIX mark. This establishes the Complainant’s prima facie case on this element of the Complaint, and the burden shifts to the Respondent to produce evidence of its rights or legitimate interests under paragraph 4(c) of the Policy. See Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241; Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753. The Respondent has not done so. The Panel’s assessment of this element of the Complaint is therefore limited to a perusal of the record provided by the Complainant.

The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested 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 organization) 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 noncommercial 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.

There is no evidence in the record that the Respondent was ever known by a name corresponding to the Domain Name, and the Respondent’s use of the Domain Name has clearly been commercial. However, the Respondent employed the Domain Name to promote its health resort hotel in Nepal, where it offered “colonic” treatments, as featured on the home page and other pages of its website. This use could possibly satisfy the condition described in paragraph 4(c)(i), unless, as the Complainant argues, the available evidence compels a conclusion that the Domain Name was chosen in bad faith to take advantage of the Complainant’s trademark. That issue is better addressed below in connection with the bad-faith element of the Complaint.

C. Registered and Used in Bad Faith

The Policy provides in paragraph 4(b) a non-exclusive list of circumstances indicating bad faith, including the following on which the Complainant implicitly relies:

“(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.”

There is no evidence here of a “pattern” of registering domain names to deprive trademark holders of that opportunity, so paragraph 4(b)(ii) is inapposite. It is also improbable that the owners of a hotel in Nepal registered the Domain Name “primarily” to disrupt the Internet and mail-order business of a firm in the United States of America selling herbal products for home use (paragraph 4(b)(iii)).

A more plausible claim is modeled on paragraph 4(b)(iv), to the effect that the Respondent took unfair advantage of a well-known mark associated with colonic cleansing products to mislead Internet users, at least initially, as to the source or affiliation of the Respondent’s website, in the hope that some of them would become interested in making a journey to Nepal where, among other things, they could obtain colonic treatments.

The best evidence in support of this argument is that the Complainant’s mark COLONIX is not a dictionary word. The Complainant characterizes it as an arbitrary mark, but it might better be considered a suggestive one. The adjective “colonic” (relating to the colon) and the noun “colonic” (plural “colonics”, referring to enemas or other colonic irrigation procedures) are English dictionary words. See, e.g., Webster’s New World Medical Dictionary (Wiley Publishing, 2008); Dictionary.com (“www.dictionary.com”, with entries based on the Random House Unabridged Dictionary (Random House, 2006)). The letter “x” is sometimes idiomatically or playfully substituted for “cs” or “cks” (with no change in pronunciation) to form the written plural of an English word, as in “sox” for “socks”, “tonix” for “tonics”, “clix” for “clicks”, “plastix” for “plastics”, “chix” for “chicks”, “jax” for “jacks”, and “bux” for “bucks”. Only a few such alternative spellings have found their way into English dictionaries (“sox” is an example), but the others listed above are all found in slang usage or in names used for Internet domains, products, or, inevitably, rock bands.

Thus, “colonix”, though not found in dictionaries, would suggest to many English-speakers “colonics”, and the Complainant does, in fact, sell colonics. But the Respondent, too, might have manufactured the term “colonix” independently, since the Respondent also offered and advertised colonics as health treatments at its resort hotel, and the use of “x” as an alternative plural form in English is hardly unprecedented.

In the absence of a Response, the Panel must decide whether there is sufficient evidence to conclude that the Respondent more likely than not deliberately emulated the Complainant’s trademark, rather than registering a Domain Name of its own invention. The Complainant’s conclusion that the former must have occurred is problematic, because it is difficult to establish that the Respondent in Nepal in 2002 was likely to have been aware of the Complainant’s mark, which was used primarily, it appears, in the United States of America. The mark had only begun to appear in advertising on herbal health websites earlier that year, and there is no evidence in the record indicating that these websites attracted substantial numbers of visitors from Asia or resulted in sales or media mention in Nepal. Moreover, it does not appear that the Respondent was a direct competitor that might be assumed to have conducted extensive market research at the time, and therefore to have become aware of the Complainant’s products. The Respondent operated a hotel in Nepal, and there is no indication that the Respondent sold colonic treatment products over the Internet or by mail-order to distant customers in competition with the Complainant.

Paragraph 4(a)(iii) of the Policy obliges the Complainant to establish that “the Domain Name has been registered and is being used in bad faith”. Thus, it expressly concerns the Respondent’s good or bad faith at the time of registration as well as subsequently. See Kooks Custom Headers, Inc. v. Global DNS, LLC, WIPO Case No. D2008-0233 (and citations therein). Although the Complainant appears to have a successful business based in the United States of America and extending to international sales, the Panel found little evidence in the record to support the contention that the Complainant’s mark (which was not yet registered in any country) was so well-known internationally in October 2002, when the Domain Name was registered, that it could fairly be assumed that the Respondent hotelier in Nepal had the mark in contemplation.

Consequently, the Panel ordered the Complainant to furnish evidence specifically concerning the use of the mark online or in Nepal at the time the Domain Name was registered, giving the Complainant an opportunity to make a fuller record. The evidence furnished by the Complainant in response to that order does not cite any advertising or sales in Nepal. The supplemental evidence does show that the Complainant began to advertise its products online with the unregistered COLONIX mark in early 2002, in English, Polish, and Hungarian, on three herbal health websites, including the Complainant’s own. There is no evidence indicating the level of international advertising and sales or showing the number of website visitors at that time, either globally or regionally.

The Complainant claims that he used an internationally known common-law trademark that was likely known to the Respondent in October 2002. However, the record establishes only that the Complainant had recently begun online advertising with the COLONIX mark a few months before the Domain Name was registered and does not demonstrate either that mark was widely known in Nepal at that time or that it was especially likely to be known to the Respondent.

Hence, the Panel does not find that the Complainant has established the probability that the Respondent registered the Domain Name in a bad-faith attempt to mislead Internet users for commercial gain. The Panel concludes that the third element of the Complaint has not been established.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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W. Scott Blackmer
Presiding Panelist

Lynda J. Zadra-Symes
Panelist

Soh Kar Liang

Panelist

Dated: July 21, 2008