Spearmint Rhino Companies Worldwide, Inc. v. Beroca Holdings B.V.I. Limited
Case No. D2007-1051
1. The Parties
The Complainant is Spearmint Rhino Companies Worldwide, Inc., of City of Industry, California, United States of America, represented by Liner Yankelevitz Sunshine & Regenstreif LLP, United States of America.
The Respondent is Beroca Holdings B.V.I. Limited, of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and the Registrar
The disputed domain name <spearmintrhino.mobi> (the “Domain Name”) is registered with EuroDNS S.A.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2007. On July 20, 2007, the Center transmitted by email to EuroDNS S.A. a request for registrar verification in connection with the Domain Name. On July 23, 2004, EuroDNS S.A. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 26, 2007. 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”).
The Center sent to the Respondent a copy of the Complaint and Amended Complaint (and a formal Notice of Complaint and Commencement of Administrative Proceeding document) which stated a commencement date of July 30, 2007 and a last date for filing a Response of August 19, 2007. The Respondent did not submit any response by that date, and the Center issued a notice of respondent default on August 23, 2007.
The Center appointed Warwick Smith as the sole panelist in this matter on August 31, 2007. The Panel had submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Following his appointment, it appeared to the Panel that the email copies of the Amended Complaint and the Notice of Complaint and Commencement of Administrative Proceeding had been sent to the wrong email address. Copies of these documents sent by courier to the Respondent’s address as shown in The Whois report for the Domain Name, had been returned with the advice “Recipient moved”, and it appeared that the Respondent had probably not received notice of the Complaint and Amended Complaint. Accordingly, the Panel extended the date for a decision in the proceeding to October 26, 2007 and requested the Center to re-forward the Complaint and Amended Complaint to the Respondent in accordance with paragraphs 4(a) and 3(a) of the Rules.
The Center then formally re-notified the Respondent of the Complaint and Amended Complaint and the due date for Response was re-set to October 7, 2007.
The Respondent did not submit any response to the re-notified Complaint and Amended Complaint, and the Center formally notified the Respondent’s default on October 8, 2007.
The Center formally re-confirmed the Panel’s appointment as sole panelist, on October 8, 2007. The Panel finds that it has been properly constituted.
4. Factual Background
The Complainant
According to the Complaint, the Complainant is an internationally active and well established company which provides restaurant and adult entertainment services. It operates clubs throughout the United States of America, United Kingdom, Central Europe, The Russian Federation, and Australia.
The Complainant says that its SPEARMINT RHINO mark is famous within the adult entertainment community. It says that its goods as well as the adult entertainment clubs it operates, prominently feature the SPEARMINT RHINO marks, and that those marks indicate the Complainant as the source of the products and services. It asserts that its customers associate the SPEARMINT RHINO marks with high quality entertainment, and high quality products.
The Complainant’s Trademarks
The Complainant has produced evidence that it is the proprietor of a number of SPEARMINT RHINO trademarks registered on the principal register of the United States Patent and Trademark Office. By way of example, the Complainant is the proprietor of the mark SPEARMINT RHINO in International Class 43 for “restaurant and bar services: preparation and serving of food and drink”. That registration has had effect from February 2006, and the certificate of registration refers to a claimed first use in commerce in October 1992.
The Complainant is also the registered proprietor of the SPEARMINT RHINO mark in the United States for a variety of clothing items in International Class 25, with effect from February 2006.
The Complainant’s Website
The Complainant operates a website at “www.spearmintrhino.com”. That domain name was registered in May of 1996.
The Respondent and the Domain Name
The Domain Name was registered on September 26, 2006.
The Complainant says that it has run a Google search on the name “Beroca Holdings”, and that, while the search produced various hits relating to domain name disputes involving the Respondent (and its bad faith registration of domain names), the search produced no clear indication of the type of any business which may be conducted by the Respondent.
The Complainant has produced a screen shot of the website to which the Domain Name resolves. The screen shot, printed on June 9, 2007, simply consists of a parking page containing the word “sedo”, and a note: “www.spearmintrhino.mobi” Registered and Parked with EuroDNS”. Under the heading “DISCLAIMER”, there appear the words: “Links that may appear on this page are provided by a third-party for advertising purposes and have not be (sic) chosen nor specifically approved by EuroDNS”. As at June 9, 2007, there were in fact no links to third party sites.
Pre-Commencement Correspondence between the Parties
The Complainant has produced copies of emails exchanged between the Complainant’s Mr. Scott Hale, and Mr. Wayne Nicholas (who is noted in the Whois information as the administrative contact for the Domain Name), in May of 2007. In brief summary, the emails show that the Complainant demanded the transfer of the Domain Name to it, and that Mr. Nicholas responded with an offer to transfer the Domain Name to the Complainant for a price of $3,000. That offer was preceded by initial advice from the Respondent that it was “currently examining whether this name is trademark protected”, and later advice that “we have completed our investigation of your trademark to our satisfaction. We do not wish to infringe any rights which may exist in the above name”.
In his emails, Mr. Nicholas emphasized the likely costs the Complainant would incur in pursuing action under the Policy, and claimed that the $3,000 transfer fee requested represented the Respondent’s “reasonable registration, administrative and legal costs and expenses”.
The Complainant held its ground, refusing to pay any money for the transfer of the Domain Name. The present proceeding under the Policy followed.
5. Parties’ Contentions
A. Complainant
1. The Complainant is the proprietor of a family of trademarks and service marks registered on the principal register of the United States Patent and Trademark Office, which consist of or include the expression “Spearmint Rhino”. The Domain Name is identical to the Complainant’s SPEARMINT RHINO marks. Further, the Complainant’s use of those marks since 1992 has been such that they have become famous within the adult entertainment industry as an indicator of the Complainant as the source of the goods and services provided under the marks.
2. The Respondent has no right or legitimate interest in respect of the Domain Name, for the following reasons:
2.1 The Complainant has never licensed or authorized the Respondent to use any of its marks, including its SPEARMINT RHINO marks.
2.2 The Respondent had not used (or made demonstrable preparations to use) the Domain Name, or a name corresponding to the Domain Name, in connection with any bona fide offering of goods or services, prior to notice of the present dispute. The Domain Name does not link to any website offering any goods or services; it is merely warehoused with the Registrar.
2.3 The Respondent has never been known by the name “Spearmint Rhino”.
2.4 The Complainant is unaware of any use the Respondent may have made of any SPEARMINT RHINO mark in connection with any business or the supply of any product or service. The Respondent has never attempted to obtain any United States registration for a SPEARMINT RHINO mark, and a Google search on the Respondent’s name did not provide any clear indication of the nature of any business which might be conducted by the Respondent.
2.5 The Respondent is not making any legitimate non-commercial or fair use of the Domain Name. On the contrary, the Respondent’s intention has been to profit by selling the Domain Name back to the Complainant, to misleadingly divert consumers, or to tarnish the Complainant’s SPEARMINT RHINO mark.
2.6 The Respondent has chosen to register as a domain name a word that one would not choose “unless seeking to create an impression of an association with Complainant” citing Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. The Domain Name reproduces the Complainant’s trademark in full, making it difficult, if not impossible, for the Respondent to use the Domain Name for commercial purposes without violating the Complainant’s rights (citing AT & T Corp v. Byeong Deog Im,
WIPO Case No. D2004-0026).
3. The Respondent has registered and used the Domain Name in bad faith, for the following reasons:
3.1 The Domain Name is identical to the Complainant’s SPEARMINT RHINO marks, and the Respondent has no right or legitimate interest in respect of the Domain Name.
3.2 The Respondent registered the Domain Name for the purpose of making a profit by selling the Domain Name back to the Complainant (the Policy, paragraph 4(b)(i)). Alternatively, the Respondent’s intention in registering the Domain Name was to misleadingly divert consumers, or to tarnish the Complainant’s SPEARMINT RHINO marks.
3.3 The very nature of the Domain Name, incorporating in its entirety the name of a popular business as well as the Complainant’s registered mark, belies any assertion that the Respondent intended to use the site for any purpose other than to profit by attempting to sell to the Complainant a domain name in which the Respondent had no legitimate rights. That purpose is also evidenced by the email exchange between Mr. Hale and Mr. Nicholas.
3.4 Registering a domain name for the purpose of disrupting a competitor’s business, or for the purpose of confusing customers and trading on the fame and goodwill of another company’s mark, is evidence of bad faith.
3.5 Registration of a domain name that is confusingly similar to the Complainant’s mark in itself constitutes evidence of bad faith (citing ATA Airlines, Inc, v. Lorna Kang,
WIPO Case No. D2004-0003, and UPIB, Inc. v. Domains Asia Ventures,
WIPO Case No. D2004-0020).
3.6 Registration of a famous mark as a domain name, by an entity that has no legitimate relationship to the mark, is itself sufficient to demonstrate bad faith.
3.7 In circumstances where the Domain Name reproduces the Complainant’s trademark in full, making it difficult, if not impossible, for the Respondent to use the Domain Name for commercial purposes without violating the Complainant’s rights, it does not matter that the Domain Name resolves to an inactive website (citing AT & T Corp v. Byeong Deog Im,
WIPO Case No. D2004-0026).
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. General Principles under the Policy
Under Paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
If a respondent does not submit a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has established that it is the registered proprietor of the mark SPEARMINT RHINO in the United States of America.
The “.mobi” part of the Domain Name is to be ignored when comparing the Complainant’s mark with the Domain Name under paragraph 4(a) of the Policy. The gap between the two words which constitute the Complainant’s registered mark cannot be replicated in a domain name, and it is also to be ignored in making the required comparison. Applying those principles, the Panel concludes that the Domain Name is identical or confusingly similar to the SPEARMINT RHINO mark in which the Complainant has rights. The Complainant therefore succeeds under this part of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] 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.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the Domain Names on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the Domain Names (there are numerous WIPO decisions where that approach has been adopted, see, for example, the decision of the three-member panel in Phillip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, citing Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624).
That approach is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Complainant has not authorized the Respondent to use the Complainant’s SPEARMINT RHINO mark, whether in the Domain Name or otherwise, and the Domain Name is identical or confusingly similar to that mark. In those circumstances, the Complainant has sufficiently made out an initial prima facie case, and the onus shifts to the Respondent to show that it has some right or legitimate interest in the Domain Name, whether under one or more of the subparagraphs of paragraph 4(c) of the Policy or on some other ground.
The Respondent has not filed a response. The Panel has looked at the record in the case, and is satisfied that the documents produced by the Complainant fully support its claim of no right or legitimate interests. Indeed, it is difficult to imagine any possible basis on which the Respondent might have claimed a right or legitimate interest in the Domain Name. The Respondent appears to have made no use of the Domain Name in connection with any offering of goods or services, and there is no evidence of it having made demonstrable preparations to do so. Therefore, paragraph 4(c)(i) of the Policy could not have been raised by the Respondent. Likewise, there is no suggestion of the Respondent (or any business operated by it) being commonly known by the Domain Name – paragraph 4(c)(ii) of the Policy could not have had any application.
Nor is there anything to suggest that the Respondent may have been making any legitimate non-commercial or fair use of the Domain Name, such as might have justified a claim to a right or legitimate interest under paragraph 4(c)(iii)) of the Policy.
In general summary, the combination of the Respondent’s failure to explain its choice of a name as unusual as “Spearmint Rhino”, its apparent failure to make any use of the Domain Name, its failure to assert any right or legitimate interest (either in the May 2007 email exchange, or in a filed Response in this proceeding), and its attempts to sell the Domain Name to the Complainant within a few months after acquiring it, leave little room for doubt on the “right or legitimate interest” issue. The Panel concludes, without difficulty, that the Respondent has no right or legitimate interest in the Domain Name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Complainant also succeeds on this part of its Complaint. That conclusion is based on the following:
1. Leaving aside the “.mobi” suffix and the gap between the words in the SPEARMINT RHINO mark, the Domain Name is identical to the Complainant’s registered mark.
2. The Respondent registered the Domain Name without any license or authority from the Complainant.
3. The Respondent has made no attempt to use the Domain Name for any purpose at all – the Domain Name has simply been pointed to a parking site. As recently as June 9, 2007, that site did not even contain any third party advertising, or links to other websites. There is no evidence of the Respondent having an intention of putting the Domain Name to any bona fide or legitimate use. (If the Respondent had any such intention, it would presumably have said so in the course of the May 2007 email exchange. Nothing of the sort was mentioned.)
4. On the evidence produced, the words “Spearmint Rhino” form a sufficiently unusual combination of English words that it is highly improbable that the Respondent could have thought of them if it had not been aware of the Complainant (or its goods or services) when the Domain Name was registered. It is also unlikely that the Respondent would have registered the Domain Name without first checking who owned the <spearmintrhino.com> domain. Of course that check would have led the Respondent to the Complainant and its “Spearmint Rhino” business. In the absence of any Response, the only sensible conclusion is that the Respondent was aware of the Complainant and its SPEARMINT RHINO mark when it registered the Domain Name, and that the Respondent appreciated that anyone who was familiar with the Complainant’s business activities conducted under the SPEARMINT RHINO mark would immediately associate any website which might be established at the Domain Name, with the Complainant’s business.
5. But the Respondent has not in fact used the Domain Name to divert Internet users looking for sites associated with the Complainant, to some website operated by the Respondent, or even linked the Domain Name to a “landing page” containing sponsored links to third party websites (with consequential “click-through” revenue for the Respondent). So why did the Respondent acquire the Domain Name? In the absence of a Response, the Panel can only sensibly conclude that the Respondent’s purpose in registering the Domain Name was to attempt to sell the Domain Name to the Complainant (being the only party who would have an obvious interest in purchasing it), at a price in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name. That is of course the kind of bad faith registration and use which is described at paragraph 4(b)(i) of the Policy. The email exchange between Mr. Hale and Mr. Nicholas supports that conclusion. The Respondent, having done nothing with the Domain Name since it was registered in September of 2006, attempted in May of 2007 to sell the Domain Name to the Complainant for $3,000. While that sum was said to cover the Respondent’s “reasonable registration, administrative and legal costs and expenses”, the Respondent did not provide any breakdown of the $3,000 in the email correspondence, and it is difficult to imagine how genuine out-of-pocket costs directly related to the Domain Name could have been as high as $3,000, especially in circumstances where no active website had been established at the Domain Name. From the email correspondence, it seems rather more likely that the $3,000 figure was pitched at a level the Respondent believed would be economically attractive to the Complainant (because it would be less than the level of legal costs the Complainant would probably incur if it made a complaint under the Policy), and at the same time provide the Respondent with a modest profit. In the absence of any documented support for the claim that the Respondent’s costs and expenses totalled $3,000, the Panel finds that the Respondent’s costs and expenses directly related to the Domain Name were probably less than $3,000, and that that asking price included an element of profit for the Respondent.
6. That conclusion is not affected by the fact that the Respondent does not appear to have made the first approach (it appears that Mr. Hale made the first contact with Mr. Nicholas). It is a common enough technique for cybersquatters to register another party’s trademark as a domain name, and then sit back and wait for the trademark owner to make an approach. The important matter in such cases, is the respondent’s intention at the time it registered the domain name. In this case, registering an expression as unusual as “Spearmint Rhino”, making no use of the Domain Name for approximately eight months and then demanding a transfer price of $3,000 when approached by the Complainant, and electing not to respond to the Complaint, all suggest that the Respondent, in registering the Domain Name, had the bad faith intention described at paragraph 4(b)(i) of the Policy.
8. The need to prove bad faith use, as well as bad faith registration (the Policy, paragraph 4(a)(iii)), does not call for any different conclusion. As noted, the Complainant has provided evidence indicating the Domain Name previously resolved to a SEDO parking page. While at the time of drafting the decision of the Domain Name does not appear to resolve to any website, panel decisions under the Policy have long held that passive holding of a domain name may in certain circumstances constitute bad faith use for the purposes of paragraph 4(a)(iii) of the Policy (see Telstra Corporation Inc. v. Nuclear Marshmallows,
WIPO Case No. D2000-0003, which has been followed by numerous WIPO UDRP panels over the last seven years). The Panel in the Telstra Corporation case identified a number of factors supporting its finding of bad faith registration and use, including the fact that the word “Telstra” was a made-up word, and that the panel could not conceive of any possible use of the at-issue domain name by the respondent which would not have infringed the complainant’s rights in some way. The same considerations apply in this case. The expression “Spearmint Rhino” appears to have no meaning in the English language, other than as a reference to the Complainant and its business activities, and the Respondent has not contested the statements in the Complaint that the Complainant’s SPEARMINT RHINO mark is famous in the adult entertainment community, and that the Complainant operates its Spearmint Rhino clubs in the United Kingdom (where the Respondent has its address) as well as in other countries. It seems to the Panel that any website the Respondent might establish at the Domain Name would inevitably create confusion, and mislead some Internet users (who were aware of the Complainant) into believing that there existed some commercial affiliation between that website and the Complainant or its products or services. The Respondent must have been well aware of that when it chose to register the Complainant’s distinctive mark as a domain name. In the absence of any Response, the Panel cannot conceive of any good faith use the Respondent might make of the Domain Name (consisting as it does of words which have no apparent meaning other than as trademarks and service marks denoting the Complainant’s goods and services).
9. Finally, the Complainant has referred in its Complaint to previous domain name disputes in which the Respondent has been held to have acted in bad faith. The Respondent has not challenged that statement, and the Panel has itself noted several such recent panel decisions – see for example Clifford Chance LLP v. Beroca Holdings B.V.I. Limited,
WIPO Case No. D2007-0693; Advance Magazine Publishers Inc v. Beroca Holdings B.V.I. Limited;
WIPO Case No. D2007-0026, and N. M. Rothschild & Son Limited and Others v. Beroca Holdings B.V.I. Limited,
WIPO Case No. D2007-1055. The Panelist in the latter case referred to two additional WIPO panel decisions in which the Respondent had been found to have registered domain names that were identical or confusingly similar to well-known trade marks owned by other parties.
In the Advance Magazine Publishers Inc case, the respondent had registered the domain name <condenast.mobi>, and in the NM Rothschild case the Respondent had registered the domain names <nmrothschild.mobi> and <Rothschild.mobi>. All of these domains were registered on September 26, 2006, being the same date the Respondent registered the Domain Name in this proceeding. In none of the three cases to which the Panel has referred did the Respondent file a response.
The three-member panel in the Advance Magazine Publishers Inc case found that the fact that the Respondent had contacted the complainant in the case offering to sell the at-issue domain name shortly after its registration for £5,000, or possibly $5,000, being a figure in excess of the Respondent’s out-of-pocket costs, was evidence of “flagrant cybersquatting”. In the N. M. Rothschild & Sons Limited case, the Respondent had requested a payment of US$4,000 to transfer the at-issue domain names. Again, the figure was in excess of the Respondent’s documented out-of-pocket costs, and the request was found to be evidence of bad faith registration and use under paragraph 4(b)(i) of the Policy.
These three cases make it abundantly clear that the Respondent has engaged in a pattern of conduct, involving the registration of third parties’ trade marks as domain names within the “.mobi” tld. In each case the Respondent has sought from the relevant trade mark owner payment of a sum of money similar to that sought from the Complainant in this case, and in each case the panel has found the Respondent guilty of the kind of bad faith registration and use described at paragraph 4(b)(i) of the Policy. In the absence of any Response, the conclusion that the Respondent registered the Domain Name in this case with the same bad faith intention, is irresistible.
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 <spearmintrhino.mobi> be transferred to the Complainant.
Warwick Smith Sole Panelist
Dated: October 26, 2007
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