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Helen of Troy Limited v. Mailadmin, Ltd. and Vitali Fed [2005] GENDND 581 (15 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Helen of Troy Limited v. Mailadmin, Ltd. and Vitali Fed

Case No. D2005-0371

1. The Parties

The Complainant is Helen of Troy Limited, Saint Michael, Barbados, represented by Ray, Valdez, McChristian & Jeans, P.C., United States of America.

The Respondents are Mailadmin, Ltd. and Vitali Fed, St. Petersburg, Russian Federation, represented by Andrey Shushkov, Russian Federation (hereafter collectively identified as Respondent).

2. The Domain Name and Registrar

The disputed domain name <vitalis.com> (the Domain Name) is registered with DomReg Ltd. d/b/a LIBRIS.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2005. On April 11, 2005, the Center transmitted by email to DomReg Ltd. d/b/a LIBRIS.com a request for registrar verification in connection with the domain name at issue. On April 13, 2005, DomReg Ltd. d/b/a LIBRIS.com transmitted by email to the Center its verification response. 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 May 9, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was May 29, 2005. The Response was filed with the Center on May 29, 2005.

The Center appointed Mark V.B. Partridge, Gordon T. Arnold and David E. Sorkin as panelists in this matter on June 21, 2005. 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.

4. Factual Background

Complainant claims that it is the owner of the following U.S. trademark registrations and applications relating to the mark VITALIS:

Reg. No. 333,125 for VITALIS in connection with hair tonic, issued March 10, 1936.

Reg. No. 1,020,875 for VITALIS SUPERHOLD in connection with hair spray, issued September 23, 1975.

App. No. 76/565,353 for V VITALIS in connection with hair shampoo, hair conditioner, hair styling gel, hair mousse, hair spray and hair tonics, filed December 12, 2003.

App. No. 78/272,760 for VITALIS in connection with hair clippers, hair dryers, combs and brushes, filed July 28, 2003.

Trademark Office Records show that Reg. Nos. 333,125 and 1,020,875 are owned by Bristol-Myers Company. These records are evidence that Bristol-Myers is the owner of the cited registrations for the VITALIS. 15 U.S.C. 1115. Complainant has provided no evidence or explanation to support its claim of ownership of these registrations.

Complainant has also provided no evidence or explanation of the nature or extent of any use by it of the VITALIS mark. The cited applications, filed in Complainant’s name, were filed as intent to use applications. Application No. 78/272,760 has matured to registration on June 7, 2005, after the filing of the Complaint. The resulting registration, Reg. No. 2,961,104, claims first use of the mark on January 1, 2005.

The domain name <vitalis.com> was initially registered by a third party on September 26, 2000.

On November 17, 2000, Respondent filed an application for registration of the trademark VITALIS in Russia and began preparations to develop a business under that brand relating to various services, including electronic billboards, various information on business transaction services and computer engineering advice. The registration issued on September 18, 2002, and is effective as of the filing date.

On December 8, 2003, Respondent purchased the <vitalis.com> domain name from the prior owner.

The principals of Respondent are named Vitali Fed and Vitali Suvorov.

5. Parties’ Contentions

A. Complainant

Complainant claims that the Domain Name is identical to a mark in which it has rights. Complaint also asserts that Respondent has no legitimate rights in the Domain Name, does not operate any website under the name, obtained the name long after Complainant or its predecessor in interest registered the mark, and is merely a domain name clearing house.

Finally, Complainant asserts that Respondent has acted in bad faith because it rejected Complaint’s offer to purchase the Domain Name for US $500 and instead demanded a price between US $40,000 and US $50,000.

B. Respondent

Respondent denies that Complainant has rights in the trademark, noting that the registrations existing at the time of the Complaint appear in the name of another party.

Respondent also asserts that it has a legitimate right and interest in the Domain Name, because it acquired a trademark registration for VITALIS long prior to this dispute and that the name VITALIS is based on the common forename of its principals.

Respondent denies that if offered to sell the domain name for profit, and instead asserts that it has consistently rejected offers for the Domain Name.

Finally, Respondent contends that Complainant is engaging in reverse domain name hijacking.

6. Discussion and Findings

To prevail on its complaint, Complainant has the burden of proving three elements: (1) that the domain name is identical or confusingly similar to a mark in which the complainant owns rights; (2) that the respondent lacks any right or legitimate interest in the domain name; and (3) that the domain name was registered and used in bad faith.

A. Identical or Confusingly Similar

Complainant has the burden of proving ownership of rights in the mark on which it relies. Rights in a trademark may be shown through ownership of a valid registration for the mark or, where common law rights are recognized, through use of the mark in commerce.

Evidence on this issue is clearly within the control of the complainant and should be present with the complaint to establish a prima facie case. Here, Complainant has failed to make that showing in at least three respects.

(1) Complainant failed to present any evidence or allegations as to its use of the mark VITALIS.

(2) The registrations on which it relies appear in the name of Bristol Myers, who is not a party to this proceeding. Complainant has not explained its relationship to these registrations or to Bristol-Myers. We cannot tell from the record submitted if Complainant has any legitimate claim to these registrations or not.

(3) The applications on which Complainant relies had not matured to registration at the time the Complaint was filed and do not provide any evidence of rights in the mark.

Accordingly, we conclude that Complainant has failed to meet its burden of proving rights in the VITALIS mark when it filed the Complaint.

B. Rights or Legitimate Interests

Complainant also has the burden of showing that the Respondent lacks any rights or legitimate interests in the Domain Name. Since such evidence is often in control of the Respondent, rather than the Complainant, this element often can be satisfied by unrebutted allegations shifting to Respondent the burden of presenting evidence to show its rights or legitimate interests in the name.

Here, Respondent has shown rights and legitimate interest in the name in several respects.

(1) Respondent is the owner of a Russian trademark registration for the mark VITALIS filed prior to its acquisition of the Domain Name. There is no indication that this registration was a sham or mere pretense to engage in cybersquatting.

(2) The selection of VITALIS is explained by the fact that the principals involved in Respondent’s business are both named Vitali.

(3) It appears that Respondent made preparations to engage in business under the VITALIS name long prior to notice of any dispute with Complainant, demonstrated by its filing of the trademark application in anticipation of engaging in business under that name and by the use of the Domain Name for email communications with contractors, prospective investors and customers.

Accordingly, we conclude that Complainant has not meet its burden of establishing a lack of rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Finally, Complainant must establish that the Domain Name was registered and used in bad faith. To prove this point Complainant asserts that Respondent adopted VITALIS long after Complainant’s predecessor in interest adopted and registered the mark and that Respondent rejected Complainant’s offer to transfer the Domain Name for $500 and instead demanded much more.

Respondent has presented evidence to show that it selected the name VITALIS based on the names of persons involved in its planned business and filed for trademark registration in Russia before obtaining the Domain Name. Respondent took these actions about three years before Complainant filed any application to Register the VITALIS mark and nearly five years before Complainant claimed to use the mark (based on the statements later submitted in connection with its trademark application).

Complainant’s contention that Respondent has tried to sell the Domain Name for profit is denied by Respondent and is not supported by any evidence in the record. Respondent contends that Complainant made an unsolicited offer to buy the Domain Name, which Respondent rebuffed.

Complainant relies on rights of its alleged but unnamed predecessor in interest to claim priority over Respondent. Unfortunately, as we have stated above, Complaint has failed to present any evidence to support that claim. Even if we assume that Complainant is a legitimate successor in interest to the registrations obtained by Bristol-Myers, Complainant presents no basis for finding that the Domain Name was registered and used in bad faith to exploit the rights of Bristol-Myers.

Thus, based on the record before us, we find that the Complainant has failed to establish that the Domain Name has been registered and used in bad faith.

D. Reverse Domain Name Hijacking

Respondent seeks a finding of reverse domain name hijacking, asserting that this proceeding was pursued in bad faith “via manipulation and concealment of facts, unfounded accusations, and other dubious methods”.

Although we have concluded that Complainant failed to prove rights in the mark VITALIS in this proceeding, the record is insufficient for us to determine if that failure of proof was a deliberate attempt to mislead the Panel. We note that Complainant has filed applications for U.S. registration of VITALIS and that one application resulted in registration after the Complaint was filed. This suggests that Complainant may have brought this action with the legitimate belief that the complaint was based on valid rights in VITALIS. Under such circumstances, we find that Complainant’s failure of proof of those rights does not support a finding of reverse domain name hijacking.

7. Decision

For all the foregoing reasons, the Complaint is denied. Respondent’s request for a finding of reverse domain name hijacking is also denied.

Dated: July 15, 2005