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Group Kaitu, LLC and Darkside Productions, Inc v. ErosMontrealGuide [2005] GENDND 346 (4 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CavinKare Private Limited v. LaPorte Holdings, Inc. and Horoshiy, Inc.

Case No. D2004-1072

1. The Parties

The Complainant is CavinKare Private Limited, Chennai, Tamil Nadu, India, represented by Loreto A. Xavier.

The Respondents are LaPorte Holdings, Inc. of Los Angeles, United States of America and Horoshiy, Inc., of Curacao, Netherlands Antilles, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <cavincare.com> is registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2004. On December 20, 2004, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On December 20, 2004, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On January 4, 2005, the Complainant amended its Complaint so as to request that the domain name <cavincare.com> should be transferred to the Complainant. 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 “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 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2005.

The Center appointed The Honourable Neil Anthony Brown QC as the Sole Panelist in this matter on January 31, 2005. 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

The Complainant is an Indian company operating as a manufacturer and merchant of personal care products, cosmetics and related goods. It commenced business in 1983 under the name Beauty Cosmetic Products Limited, but in 1998 it changed its name to CavinKare Private Limited. Evidence submitted by the Complainant is to the effect that the name was chosen because CAVIN is a Tamil word meaning ‘Beauty’ and CK are the initials of the given names of the founder of the company, Mr. C K Raganathan.

The Complainant uses the name CavinKare as its company and business name and as the collective name under which its various products are promoted and it has done so since 1998. It does not have a registered trademark in the name, although it applied for one on or about May 22, 2003, and shortly thereafter it applied for registered copyright in its corporate logo. Apparently the trademark has not yet been granted, but on August 16, 2003, the Senior Examiner of Trademarks in Mumbai certified that no trademark identical with or deceptively similar to the Complainant’s proposed mark had been registered and that no application had been made by any person other than the Complainant for the same mark.

The Complainant also registered the domain name<cavinkare.com> on October 5, 1998.

Respondent 2 registered the disputed domain name, <cavincare.com>, on December 2, 2002, and transferred it to Respondent 1 on a date between September 23, 2004, and November 5, 2004, they being the dates on which the Complainant conducted WHOIS searches to ascertain the registrant of the domain name and found that on the first date the registrant was Respondent 2, but by the second date the Registrant was Respondent 1. From the date of transfer Respondent 1 must be taken to have become the successor-in-title of the domain name to Respondent 2.

5. Parties’ Contentions

A. Complainant

The Complainant’s case is that the contentious domain name should be transferred to it and that this should be done because it can make out all three of the elements provided for in paragraph 4(a) of the Policy and because such a transfer is the appropriate remedy to be granted. Those three elements must be established before such an order for transfer may be made.

The Complainant therefore contends, first, that it has rights in the trademark or service mark ‘CavinKare’ and that the domain name chosen by Respondent 2 and subsequently used by both Respondents respectively, is confusingly similar to that mark.

The Complainant concedes that it “…does not use a trademark by the name ‘CavinKare’, although it is clear from the context that what the Complainant means is that it does not actually sell products that are branded ‘CavinKare’. Rather, the products have names such as ‘Chik’, ‘Nyle’ and ‘Meera’.”

It does, however, say that ‘CavinKare’ is its ‘trade name’ and that the name is owned by the Complainant by virtue of prior adoption, continuous and extensive use, advertising and the reputation it has acquired in the course of its trade of manufacturing and selling the products referred to.

Moreover, it submits that its goods are marketed as coming from the ‘House of CavinKare’.

It has also adduced in evidence Annex K to the Complaint which shows that the Complainant’s products are actually described and promoted, at least on its website, as “CavinKare’s superior quality products…” There is also evidence contained in the same Annex that one of its subsidiary companies is called Cavin Plastics and Chemicals Private Limited. The Complainant also relies on the fact that it registered the domain name <cavinkare.com> in 1998, which incorporated the whole of its trade name.

Accordingly, it says that for all of those reasons, the name CavinKare is intimately linked with the Complainant’s products.

The Complainant’s mark might correctly be described as a service mark, but there is such an overlapping between the notion of a trademark and that of a service mark that the two are now largely interchangeable and are usually referred to as a trademark.

In any event, it is clear that the Complainant’s contention is in substance that the evidence shows that the name CavinKare is a trademark or service mark within the meaning of paragraph 4(a)(i) of the Policy and the Panel will therefore proceed on that basis.

The Complainant then claims, to complete the first element that it must establish, that the domain name <cavincare.com> is identical or confusingly similar to its trade name, for they are phonetically identical, similar in appearance and also confusing in the sense that the domain name resolves to a website which deals with the same type of products as the Complainant manufactures and sells and the same type of products as appear on its website, as well as other products and services.

Secondly, the Complainant contends that neither of the Respondents has any rights or legitimate interests in respect of the domain name, as they have never used it in connection with a bona fide offering of goods or services, they are not known by the domain name itself and they have clearly seized on the unique name of this prominent company to trade off its good will and reputation and in particular to divert internet traffic intended for the Complainant to third party websites.

Thirdly, the Complainant says that all of the circumstances show that Respondent 2 registered the domain name in bad faith and that both Respondents have continued to use it in bad faith. It is said that Respondent 2 registered the name, with only a minor spelling difference, so as to confuse people and that, in any event, it is a habitual cybersquatter who engages in that sort of conduct. Moreover, it is alleged, both Respondents have sought to profit from the confusion thus created by acting in an opportunistic way by having consumers misleadingly directed to the Respondents’ website and then to other sites where further confusion inevitably arises as to whether the offerings on those websites have been endorsed by the Complainant.

The Complainant therefore contends that having made out each of these three elements, the appropriate remedy is to have the contentious domain name transferred.

B. Respondent

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

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. It is appropriate, therefore, to note that merely because the Respondent has not made a Response to the Complaint does not avoid the necessity of examining the issues and of doing so in the light of the evidence.

In fact, paragraph 4 of the Policy expressly provides that in administrative proceedings “…the complainant bears the onus of proof”. As the proceeding is a civil one, the standard of proof is on the balance of probabilities.

The onus of proof therefore remains on the Complainant even where, as in the present case, the Respondent has not made a Response or put in a submission. That principle has been enunciated on many occasions by UDRP panels.

The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before an order can be made to transfer the domain name.

However, it is equally true that, in the course of deciding whether that onus has been discharged, it is possible to draw inferences both from the evidence that has been submitted and, in appropriate cases, from silence. Indeed, paragraph 14 of the Rules specifically provides that if a Party does not comply with its obligations, the Panel is still required to proceed to a decision, but it is also required to draw such inferences “as it considers appropriate” from the non-compliance.

That being so, the Panel will now proceed to enquire if the Complainant has discharged its onus to prove each of the three elements specified in paragraph 4(a) of the Policy. The three elements, each of which must be proved, are:

A. That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

B. That the Respondent has no rights or legitimate interests in respect of the domain name; and

C. That the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The first thing that must be said in discussing this element is that, although the Complainant claims that the contentious domain name is identical or confusingly similar to the trade name ‘CavinKare’, that name is not a registered trademark. The question therefore arises whether an unregistered trademark is sufficient to support the allegation that, within the meaning of paragraph 4(a)(i) of the Policy, a domain name is identical or confusingly similar to a trademark or service mark.

The answer to this question is to be found in the wording of the paragraph itself, for it will be seen that it does not require the existence of a registered trademark or service mark. This is so for several reasons. First, the concept of the registered trademark and the concept of the unregistered trademark must have been well-known to those who drafted the Policy and the fact that they chose simply to describe the interest that had to be established as a ‘trademark’ shows that they had in mind either interest as being sufficient to support the claim.

Secondly, it would be illogical to deny the protection offered by the Policy simply because a trademark, otherwise well-established, recognized and understood, had not yet been registered or was perhaps not even capable of being registered in one country or another.

Moreover, in the practical application of the Policy, it is has become widely accepted, and for very good reasons given in those cases, that registration of the trademark or service mark in question is not required. Thus it was said in ISL Marketing AG, and the Union des Associations Européennes de Football v. The European Unique Resources Organisation 2000 B.V., WIPO Case No. D2000-0230, that: “The Policy’s requirements appear to be minimal and limited to the fact that a certain number of letters and/or numbers is recognizable as a trademark or service mark by a significant number of internet users or consumers in general.”

Accordingly, what is significant and what is looked for in complaints under the Policy is that internet users and consumers recognize or should reasonably be taken to recognize a mark as the established sign of someone else’s trade or service, rather than the formality of whether it has been registered.

That issue was usefully summarized in True Blue Productions, Inc. v. Chris Hoffman, WIPO Case No. D2004-0930 where the opportunity was taken of setting out a series of UDRP cases and articulating their combined effect. The panel summarized the situation as follows:

“Regarding any distinction in coverage between registered and unregistered marks, paragraph 4(a) of the Policy simply recites: “You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that … (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights” [emphasis added]. Nowhere does the Policy contain a restriction that specifically limits its reach to only registered marks. Therefore, given the apparent inclusive nature of the Policy, whether the Complainant has rights to an unregistered mark and hence a protectable interest under the Policy, lies with national trademark law that governs the Respondent’s actions that are the subject of the Complaint. Under American law, rights accrue in unregistered, so-called “common law”, marks as a result of usage, though limited by geographic and product/service markets in which the mark is used. As evidence of this, one need turn no further than to §43 of the Lanham Act (15 U.S.C. §1125(a)) which states, in pertinent part: “Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof … (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person … shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.” [emphasis added].

Consequently, numerous panels, including this one, when faced with unregistered marks, have upheld their protectable status in the United States under the Policy. In that regard, when faced with this issue, the panel in Brooklyn Institute of Arts and Sciences v. Fantastic Sites, Inc., FA 95560 (National Arbibration Forum, November 2, 2000) held:

“ICANN dispute resolution policy is broad in scope in that the reference to a trademark or service mark in which the complainant has rights means that ownership of a registered mark is not required, unregistered or common law trademark or service mark rights will suffice to support a domain name complaint under the policy”. See, e.g., AT&T Corp. v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605 (September 11, 2002), Peter Frampton v. Frampton Enterprises, Inc., WIPO Case No. D2002-0141 (April 17, 2002); America Online, Inc. v. John Deep d/b/a Buddy USA Inc., FA 96795 (Nat. Arb. Forum, May 14, 2001); Missing Children Minnesota v. Run Yell Tell, Ltd., FA 95825 (Nat. Arb. Forum, November 20, 2000); Mike Warner 2001 v. Mike Larson, FA 95746 (Nat. Arb. Forum, November 15, 2000); CMG Worldwide Inc. v. Naughtya Page, FA 95641 (Nat. Arb. Forum, November 8, 2000); Home Properties v. SMSOnline, FA 95639 (Nat. Arb. Forum, November 2, 2000); and Bridal Rings Company v. Yemenian, FA 95608 (Nat. Arb. Forum, October 26, 2000). Furthermore, the panel in United States Postal Service v. Consumer Info. Org., FA 95757 (Nat. Arb. Forum, November 27, 2000) held: “The UDRP does not discriminate between registered and unregistered marks.” In Exario Network Inc. v. THE DOMAIN NAME YOU HAVE ENTERED IS FOR SALE, AF-0536, (eResolution, December 11, 2000), the panel recognized: “It is well established that a complainant need not own a registered trademark to invoke the policy. It is sufficient that a complainant have rights in an unregistered trademark.” In that regard, also see Sand Hill Wholesale of Ohio v. Hatton, FA 95970 (Nat. Arb. Forum, December 18, 2000), and David Taylor Cadillac/Buick Co. v. Spider Works, Ltd., FA 95832 (Nat. Arb. Forum, November 30, 2000). Similarly, see American Home Products Corp. v. Healthy Futures, WIPO Case No. D2000-0454 (August 3, 2000); Cho Yong Pil v. ImageLand, Inc., WIPO Case No. D2000-0229 (May 10, 2000); Seek America Networks, Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131 (April 13, 2000); and Bennett Coleman & Co. Ltd. v. Steven S Lalwani and Bennett Coleman & Co. Ltd. v. Long Distance Telephone Company, WIPO Case No. D2000-0014 and WIPO Case No. D2000-0015 (March 11, 2000).”

The Panel has quoted this extract at length to show that the jurisprudence has now established that a case can be made out under paragraph 4(i)(a) of the Policy provided that the Complainant can establish the rights to, at least, an unregistered trade or service mark in the relevant country.

In the countries concerned in the cases just quoted, such an interest was able to be made out under the law that was applicable in those cases. Likewise, in the present case, it must be established that a similar interest arises under what was described in the True Blue Case, supra, as “the national trademark law that governs the Respondent’s actions that are the subject of the Complaint.”

In the present case, the national trademark law in question is the law of India, for it is only by reference to the law of that country that an assessment can be made of the rights that have accrued to the Complainant from its use over the years of the trade name ‘CavinKare’ and the other uses to which it has put that name. That assessment will then govern the propriety or otherwise of the Respondents’ actions in registering and using a domain name that is said to be a breach of the Policy. It is only in India that facts could have arisen showing that the Complainant through usage had established the rights to its unregistered trademark, which it now seeks to protect through the Policy.

The question therefore is whether such a right may be established under the law of India.

The Panel is satisfied that such a right may be established under the law of India. In support of that proposition, the Panel refers, first, to the decision in Bennett Coleman & Co. Ltd. v. Steven S. Lalwani, WIPO Case No. D2000-0014, which is analogous to the present case, for it concerned an Indian Complainant making a complaint under the Policy, as in the present case, against a United States Respondent that was the registrant of a contentious domain name.

In that case, the complainant published The Economic Times in India and the respondent registered the domain name <theeconomictimes.com> in the United States of America. As in the present case, the complainant did not have a registered trademark in India to support its claim that the respondent had chosen a domain name that was identical or confusingly similar to the complainant’s trademark. But it could establish that it had unregistered trademark rights in the name. The case proceeded on the basis that those rights had to be established as existing in India and that case was subsequently made out.

Accordingly, the complainant was able to make out the first element under the Policy, relying solely on its unregistered trademark. In the course of its decision, the panel made the following observations, which again are directly relevant to the present case and which clearly establish the principle at issue: “(4) The Respondents have also asserted that the Complainant’s Indian trademarks are no longer registered. Whether or not that is so, it is clear that the Complainants have a very substantial reputation in their newspaper titles arising from their daily use in hard-copy and electronic publication. In India itself wrongfully adopting the titles so as to mislead the public as to the source of publications or information services would in all likelihood amount to the tort of passing off. As already stated, it is this reputation from actual use which is the nub of the complaint, not the fact of registration as trademarks.”

For those reasons, the panel in that case accepted that the first element and subsequently the other elements under the Policy had been established and it ordered that the domain name be transferred to the complainant.

The Panel as presently constituted is of the view that the decision in the Bennett Coleman Case, supra, is directly relevant to the present case and established a principle that should be followed here.

Secondly, the Panel is of the opinion that it is possible to go further than saying that misappropriating an unregistered trademark would “in all likelihood amount to the tort of passing off” in India, for it was held in Yahoo! Inc v. Akash Arora (1999) FSR 931 that such is certainly the case. It was held in that case that although Yahoo! had not been registered as a trademark in India, although an application for its registration was pending, the use of the Yahoo! name and its reputation were sufficient to support an action for passing off. The situation was usefully summarized in the Yahoo! Case, supra, by a quotation from the earlier Indian decision of Ellora Industries v. Banarsi Dass & Ors (1981) 46, where it had been observed:

“But there is a difference between statute law relating to trademarks and the passing off action; for, while registration of relevant mark itself gives title to the registered owner, the onus in a passing off action lies upon the plaintiff to establish the existence of the business reputation which he seeks to protect. The asset protected is the reputation the plaintiffs’ business has in the relevant mark.”

The Yahoo! Case, supra, shows therefore that an unregistered trademark is regarded under Indian law as conferring a protectable interest. That view was also supported in the subsequent case of Rediff Communications Limited v. Cyberbooth & Anor (1999), reported in Cyberlaw India and seems now to be well established.

Accordingly the Panel is of the view that, under current Indian law, a party’s trading name, style and business is a protected interest, that it is protected by the tort of passing off and that it constitutes a trademark and, in an appropriate case, a service mark for the purposes of paragraph 4(a)(i) of the Policy, even though neither mark has been registered.

That being so as a matter of law, it remains to be considered whether, on the facts of the case, the Complainant has been able to show that it has an unregistered trademark.

The Complainant started to trade under the name CavinKare only in 1998 and it might be thought that this has not been long enough to establish a strong enough reputation to found a claim for a well-known trading name or an unregistered trademark.

Clearly, how long the name has been in use is one factor that must be taken into account and this issue is reflected in the UDRP cases that have been decided. Thus, in Worldcom Exchange, Inc v. Wei.com, Inc, WIPO Case No. D2004-0955, it was held that an unregistered trademark held “for more than 10 years” was enough to support a complaint under the Policy.

In contrast, in us Documents, Inc. v. Flexible Designs, Inc./Craig Dinan, WIPO Case No. D2003-0583, usage of an unregistered mark from a date that commenced 16 months after the domain name was registered, but only 8 days before the complaint was filed, was held to be inadequate, although the mark claimed in that case was said to be either generic or merely descriptive and the claim for an unregistered mark of any value was accordingly very weak.

At the far end of the scale, it was held in the True Blue Case, supra, that acquiring common law rights in an unregistered trademark only one day before the contentious domain name had been registered was, on the facts of that case, sufficient.

Clearly, any given case will depend on its own individual facts. In the present case, the Panel is influenced by the persuasive case that the Complainant’s representative has made out in support of the value of and the rights established in, the Complainant’s trading name.

The name was first adopted by the Complainant in 1998, over four years before the contentious domain name was registered. It is clearly a genuine trading name which is not generic and although the “Kare” part of the name may be descriptive, the name as a whole is distinctive and unique because of its prefix. Moreover, the name has acquired a distinctiveness because of its continuous and extensive use. Indeed, the very nature of the word with the collocation of its two constituent elements shows that it has been carefully crafted. The Complainant has also lodged trademark and copyright applications for its logo, it registered a domain name <cavinkare.com> on October 5, 1998, four years before the Respondent registered the contentious domain name, and it has an active website at “www.cavinkare.com” promoting the company name, CavinKare, its history, philosophy and products.

The facts set out in the Complaint and the contents of the four pages of Annex K show a sustained link between the name and a series of quality products identified with it and a program by the Complainant of building up a reputation in the name because of innovation, research and development, a strong distribution network and safe ingredients. There is nothing to suggest that that reputation has not been achieved since 1998.

All of the factors, taken together, go to make up a substantial trading name and a reputation associated with that name over a sufficient period of time. Accordingly, the Panel finds that the Complainant has rights in a trading name, style, business and reputation that are protected and hence that it has ‘a trademark or service’ sufficient to make out a case under paragraph 4(a)(i) of the Policy.

Finally, that case is made out because the contentious domain name is virtually identical and confusingly similar to the Complainant’s trademark..

The two names are phonetically the same and are spelt the same, except that the Respondent in devising the domain name has substituted a “c” for the “K” of the trademark. It has been held many times that such a minor change does not militate against a conclusion that two names are confusingly similar.

Thus, in The Toronto Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571, a panel had no difficulty in deciding that the domain names <tdwatergouse.com> and <dwaterhouse.com> were essentially identical and confusingly similar to the trademark TD WATERHOUSE, for the former had one letter changed and the latter had one letter omitted. There are many similar cases, of which at least one is particularly illustrative, namely Yahoo! Inc. v. Eitan Zviely et al, WIPO Case No. D2000-0273. In that case, a series of domain names was held to be confusingly similar to the Yahoo! trademark, the similarity and confusion arising from variations that had been made to the spelling of the name, such as Jahu, Jaghoo and Yahjoo. The variation to the spelling of the trademark that has occurred in the present case has resulted in the same confusing similarity.

Likewise, it has been held many times that two names may be identical or confusingly similar although the trademark has had the “.com” suffix added to it to create the domain name: Infospace co v. Tenenbaum Ofer, WIPO Case No. D2000-0075; VAT Holding v. Vat.com, WIPO Case No. D2000-0607; and Singapore Airlines v. Robert Nielson, WIPO Case No. D2000-0644.

Accordingly, the Complainant has reached safe harbour on the first element that must be established, for it has shown in every respect that the contentious domain name is virtually identical or confusingly similar to the trademark or service mark in question.

B. Rights or Legitimate Interests

The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not make a Response or any other form of submission. That is so in the present case, where the Respondents were given notice on January 4, 2005, that the administration proceeding had been commenced and were served with a copy of the Complaint, which included the allegation that they had no rights or legitimate interests in the domain name <cavincare.com>. So the Respondents were put on notice that this was an issue.

The Respondents were also given notice that they had until January 24, 2005, to send their Responses to the Complainant and to the Center, that they would be in default if they did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw such inferences from their default as it considered appropriate.

As the Respondents are in default, the Panel, after considering all of the evidence and drawing all reasonable inferences both from the evidence and from the default, concludes that the Respondents have no rights or legitimate interests in the domain name. That is so for the following reasons:

First, if the Respondents had any such rights or interests it was a simple matter for them to say what they were.

Secondly, the conclusion that neither Respondent has any rights or legitimate interests in the domain name is supported by the unusual name itself and the way it is constructed. Respondent 2 chose as its domain name, and Respondent 1 carried on and adopted as its own, a unique name which is clearly intended by its owner to describe a range of products it has linked with that unique name, almost certainly its own name.

It stretches credulity to breaking point to believe that it was a mere coincidence that the Respondents adopted a name, one half of which is “cavin”, as in the Complainant’s name, and the other half of which is “care”, also in the Complainant’s name, although spelt with a “K”. If it is not co-incidence, the inference inevitably arises that the Respondents have misappropriated the Complainant’s name and knowingly so. There is no evidence to rebut that inference. Such conduct cannot create rights or legitimate interests.

Moreover, Respondent 2 registered its domain name on December 2, 2002, when the Complainant had been in business under its own name for over 4 years and after the Complainant had established its business name and the reputation that began to attach to it. Respondent 1 apparently adopted the domain name as its own a few months later. These events raise the inference that Respondent 2 chose its domain name and Respondent 1 adopted it for some illegitimate purpose, such as that it was minded to trade on the Complainant’s good name for its own benefit. That is not conclusive, of course, as against either Respondent, but if there were a more innocent or legitimate explanation on either of their parts, they could have given it. The absence of such an explanation re-enforces the inference that there is no innocent or legitimate explanation for the Respondents’ respective choice and adoption of the name. See: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Thirdly, the evidence that has been collected and adduced by the Complainant in Annexes L and M to its Complaint shows that the Respondents have in fact been trading on the Complainant’s goodwill and in an entirely illegitimate manner. The evidence shows that the Respondents have been infringing the Complainant’s rights to its trademark, disrupting its business by ensnaring its customers including, presumably, young people who are notoriously fascinated by hair care, skin care and frangrances and redirecting their internet searches to other websites.

The Respondents must surely have been doing this for money and have refused to cease and desist when asked to do so. The Panel has no hesitation in saying that when the acquisition and use of a domain name is based on a clear intention to use another party’s name for deceptive purposes, it cannot give rise to rights and when all of the activities just described are illegitimate, as they clearly are, they cannot create legitimate interests.

When the evidence also shows, as it does and as is seen from the cases cited by the complainant, that Respondent 2 has engaged in cybersquatting and has been found by UDRP Panels to have done so and when Respondent 1 has inherited the consequences of that conduct, those facts reinforce the conclusion that neither Respondent has rights or legitimate interests in respect of the domain name.

These conclusions reached by the Panel are consistent with many UDRP decisions of which the following are examples: Target Brands, Inc. v. Bealo Group S.A., FA128684; MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205, Chef America, Inc. v. Sean Murray, WIPO Case No. D2000-1481 and Brown & Bigelow, Inc. v. Bostjan Rodelka, FA96466.

Fourthly, it should not be forgotten that the Policy provides a straightforward mechanism under which a respondent may establish rights or legitimate interests in the domain name. Paragraph 4(c) sets out three criteria, any one of which, if proved, “is to be taken to demonstrate” the respondent’s rights or legitimate interests in the domain name.

In other words, a respondent may rely on any one of the three. However, the Respondents in the present case have not endeavoured to establish even one of those criteria, giving rise to the inevitable inference that they could not do so by credible evidence.

Indeed, as the Complainant has carried out some investigations of its own, the evidence that there is shows that the Respondents have not used the domain name for a bona fide offering of goods and services, they are not commonly known by the domain name and they are certainly not making a legitimate non-commercial or fair use of the domain name, thus making it impossible for them to make out any of the three grounds in paragraph 4(c).

For these reasons, the Panel finds that the Respondents have no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

With respect to this third element, paragraph 4(b) of the Policy sets out some detailed criteria, any one of which, if proven, is deemed to be “evidence of the registration and use of a domain name in bad faith.” It will be seen that both features must be proved, that the domain name was registered in bad faith and that it is being used in bad faith.

However, it is clear that the criteria listed in paragraph 4(b) are not exhaustive and that other factors may also be relied on to show bad faith. Having considered all of the evidence, the Panel concludes that the conduct of the Respondents principally comes within the fourth criterion set out in paragraph 4(b) of the Policy.

This condition may be paraphrased as using the domain name to attract Internet users to a website by creating confusion with the Complainant’s name or mark as to whether that other website or the products or services on it are sponsored by the Complainant. The offending use must be intentional and it must also be done for commercial gain before it will constitute bad faith.

That is a very accurate description of the Respondents’ conduct in this case, for they must both be presumed to have engaged in it at the respective times when they were responsible for the use to which the domain name was being put.

At the time of registration, Respondent 2 chose a name that was virtually the Complainant’s trademark, business name and domain name and made only a minor change to the spelling of that name.

Both Respondents then counted on users who wished to visit the “www.cavinkare.com” site typing “www.cavincare.com”, either because they would mistype the address or because they mistakenly believed that this was the correct way to spell the name of the site. Having lured the mistaken user into their website, the Respondents have then presented them with an array of goods and services, some of which are in the fields of skin care, health care, fragrances and suchlike, being fields in which the Complainant trades, but many of which are not. If the visitor makes a choice as to what goods or services are of interest, he or she is then sent to another website where particular traders, although not the Complainant and neither of the Respondents, present their goods and services for sale. This, of course, has been done as a series of deceptions.

The first deception is to deceive consumers into believing that they are in the site of CavinKare when in fact they are not. The second deception is that the information on the “www.cavincare.com” website is in fact information about CavinKare and its products, when in fact it is not. For example, giving the heading ‘Company Profile’ in the menu bar and under ‘Popular Links’ is a clear representation that one will find there information about the company profile of CavinKare, whereas in reality the information presented is simply information that companies might buy, such as credit reports. Information about ‘Job Opportunities’ in the menu bar and under ‘Popular Links’ is an equally clear representation that one will find there information about jobs available with CavinKare, whereas in fact the information provided is nothing more than advertisements for job agencies. More importantly, the heading ‘Skin Care’ in both the menu bar and under ‘popular Links’ is a clear representation that the consumer will find information about the skin care products of CavinKare, whereas in reality the information presented is on skin care and related products of companies other than CavinKare and who may even be its competitors. Underlying this whole process is the deception that, as the consumer has been dishonestly led to believe that the site is the site of CavinKare, the goods and services being promoted have the imprimatur of CavinKare, which of course they do not.

This deception is a clear attempt by the Respondents to divert users to Internet sites other than the Complainant’s and it is illustrated by Annex L to the Complaint, which shows some of the allurements being offered to unsuspecting visitors to the site.

The point is clear that having falsely induced the visitor into the ‘cavincare’ site by its very name, the Respondents have perpetuated the deception by actively suggesting that:

(a) the site is the site of CavinKare when it is not;

(b) the services offered on it are those of CavinKare when they are exclusively the services of other companies; and that

(c) one of the known offerings of CavinKare, skin care, is available from it at that site, when in fact it is being offered only by firms other than CavinKare.

By these means, the Respondents have clearly engaged in the conduct described in paragraph 4(b)(iv) of the Policy and must be taken to have done so intentionally and for commercial gain.

They have therefore, for that reason, registered the domain name in bad faith and are using it in bad faith.

Moreover, the whole modus operandi of the Respondents from the initial cybersquatting registration of the domain name, the hope that may be inferred that sooner or later CavinKare may be forced to buy the name, the process of typosquatting to induce consumers to go to other websites, all constitute bad faith. The fact that Respondent 2 is a serial offender only reinforces that conclusion.

These and similar facts have been accepted many times by UDRP panels as showing both registration and use in bad faith for commercial gain at the expense of the Complainant, its goodwill and reputation: see for example: America Online v. Xianfeng Fu, WIPO Case No. D2000-1374.

The Complainant has thus made out the third element and hence all three elements that it must establish.

The Panel is also of the view that transfer of the domain name to the Complainant is the appropriate remedy.

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 domain name <cavincare.com> be transferred to the Complainant.

The Honourable Neil Anthony Brown QC
Sole Panelist

Dated: February 14, 2005