WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Christine Schrammek Kosmetik GmbH & Co. KG v. Advanced Laser Therapy Clinics Australia Pty Ltd

Case No. DAU2014-0034

1. The Parties

The Complainant is Christine Schrammek Kosmetik GmbH & Co. KG of Essen, Germany, represented by Spruson&Ferguson Lawyers, Australia.

The Respondent is Advanced Laser Therapy Clinics Australia Pty Ltd of Earlville, Queensland, Australia, represented by Murray & Lyons, Australia.

2. The Domain Name and Registrar

The disputed domain name <greenpeel.com.au> is registered with TPP Domains Pty Ltd. dba TPP Internet.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 24, 2014. On the same day, the Center transmitted by email to TPP Domains Pty Ltd. dba TPP Internet a request for registrar verification in connection with the disputed domain name. On October 27, 2014, TPP Domains Pty Ltd. dba TPP Internet transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy" or ".auDRP"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au 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 October 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 24, 2014. On November 28, 2014, the Respondent sent an email to the Center.

The Center appointed Andrew F. Christie as the sole panelist in this matter on November 28, 2014. 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.

On December 2, 2014, the Panel issued Procedural Order No 1, requesting the Complainant to file no later than December 5, 2014, a statement indicating whether any, and if so what, response was given to the Respondent's letter of November 18, 2014, and permitting the Respondent to file a response to the Complaint no later than December 10, 2014. On December 10, 2014, the Complainant transmitted by email to the Center a response to Procedural Order No 1. On December 10, 2014, the Respondent transmitted by email to the Center its response to the Complaint.

4. Factual Background

Approximately 60 years ago, the founder of the Complainant, Christine Schrammek, developed her herbal peeling treatment for women suffering from impure or damaged skin, which has come to be called "Green Peel". The Complainant was founded in 1964 and is known internationally, including in Australia, for its skin care products and treatments. Over the last seven years its sales of "Green Peel" products internationally has been in excess of EUR 4.5 million.

The Complainant has obtained numerous registrations for its GREEN PEEL trademark in Australia and in various other countries, dating from at least as early as 1989 in Germany and 2009 in Australia. The Complainant has developed a prominent Internet presence for products using its GREEN PEEL trademark, including in connection with the Complainant's website situated at "www.greenpeel.com", which receives approximately 6,000 clicks per month.

A company associated with the Respondent, initially called "Natural Image Trading" and later OmniDerm Pty Ltd ("OmniDerm") was the authorized distributor of the Complainant's products in Australia from 1997 until September 2008, when the distribution agreement was terminated by the Complainant.

The disputed domain name appears to have been first registered on December 19, 2005, in the name of Silk & Mink Pty Ltd ("Silk & Mink"), a body corporate that appears to be related to OmniDerm Pty Ltd. The sole director and shareholder of Silk & Mink (now deregistered) was Karen Amanda Fister, a former director of OmniDerm and a current director of the Respondent. The Complainant wrote to Ms Fister on September 11, 2013, requesting that she give up the disputed domain name now that the distribution agreement had been terminated. Upon discovering that Silk & Mink had become deregistered, the Complainant wrote to then registrar TPP Wholesale Pty Ltd on March 17, 2014, pointing out the deregistration of the registrant and requesting that the disputed domain name be "removed". On May 20, 2014 the Complainant was informed by the "reseller" of the disputed domain name that the domain name was now registered in the name of the Respondent.

Screenshots supplied by the Complainant show that on October 23, 2014, the disputed domain name resolved to a website providing information on the goods and services of the Respondent's business. According to that website, the Respondent claims to "specialise in premium technologies and methods to help you achieve inner and outer health & wellbeing", one of which is described as "herbal peels". As at the date of this decision, the disputed domain name resolves to what appears to be the same, albeit slightly updated, website.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or deceptively similar to its GREEN PEEL trademark, and that the gTLD elements of a domain name have no distinguishing capacity when the balance of a domain name is identical to a trademark.

The Complainant contends that there are connections between the company that initially registered the disputed domain name, Silk & Mink (now deregistered), the former Australian distributor of the Complainant, OmniDerm, and the Respondent; and that Paul Otmar Fister and Karen Amanda Fister have, at different times, been the sole director and shareholder of one or other of these companies, and that these people appear to be related. The Complainant contends that between September 11, 2013, and August 27, 2014, it has contacted one or other of the above companies (depending on which one was registered and which one owned the disputed domain name at particular dates), and/or their directors, and the registrar of the disputed domain name, requesting that they cease using the GREEN PEEL trademark and transfer the disputed domain name to the Complainant. There have been numerous pieces of correspondence between the Complainant and various entities and individuals associated with the disputed domain name at different times during this period.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) its adoption and extensive use of the GREEN PEEL trademark predates by many years the Respondent's first use of the disputed domain name; (ii) the Respondent or its related corporate entities were the former distributors of the Complainant's products bearing the GREEN PEEL trademark in Australia and any use by them would inure to the benefit of the Complainant; (iii) the Complainant has not granted the Respondent any license, permission or other right by which it could own or use any domain name incorporating the Complainant's GREEN PEEL trademark; (iv) the disputed domain name is not a name or nickname of the Respondent, nor is it in any other way identified with or related to any rights or legitimate interests of the Respondent; (v) as at the first cease and desist correspondence from the Complainant dated September 11, 2013, the Respondent did not have any trademark application or registration, company name registration, or business name registration for or including "Green Peel"; and, indeed, the Respondent's related company's attempts to register "Green Peel" as their trademark failed due to the prior rights of the Complainant; and (vi) the Respondent is not conducting any business under the business name "Green Peel".

The Complainant contends that the disputed domain name was registered or is subsequently being used in bad faith because: (i) given the relationship between Paul Fister and "Amanda Fister" [sic – presumably meant to read "Karen Fister"] and their related corporate entities including OmniDerm, the original registrant of the disputed domain name, and the Respondent, it is inconceivable that the Respondent was unaware of the GREEN PEEL trademark and the Complainant's ownership and rights in that trademark when it registered the disputed domain name; (ii) the fact that the Respondent, or its predecessor company, Silk & Mink, registered the substantially identical disputed domain name without authorization is, in and of itself, evidence of its bad faith registration; and (iii) the act of continuing to hold the disputed domain name after the termination by the Complainant of the Australian distribution arrangement with the related company of the Respondent, OmniDerm Pty Ltd, and the continued refusal to cease using that domain name or transfer it to the Complainant, can only be regarded as a bad faith measure deliberately undertaken to obstruct the Complainant or its new distributor in Australia from using the natural commercial ".au" domain name bearing the trademark GREEN PEEL, and to disrupt its business activities for the Respondent's own benefit.

In response to Procedural Order No. 1, the Complainant indicated that it had previously attempted to contact the Respondent seeking transfer of the disputed domain name without success, and that it had no further response to the Respondent's communication of November 18, 2014, stating that "the Complainant has no interest in being compelled to purchase a domain name bearing its trade mark from a former distributor."

B. Respondent

On November 18, 2014, the Respondent's lawyers sent a letter to the Complainant's lawyers in which it made the following points: (i) the Respondent would like a further 28 days to respond to the complaint; (ii) the Respondent purchases products associated with the "Greenpeel process" through an Australian supplier, Hamaya International Pty Ltd; (iii) the Respondent promotes the "Greenpeel process" as part of its business and needs to use the name "Greenpeel"; (iv) the Respondent proposes a "without prejudice" conference with the Complainant to see if the matter can be resolved on suitable terms to both parties to continue the current commercial arrangements; and (v) the Respondent has offered in the past and remains prepared to sell the disputed domain name to the Complainant for an "appropriate compensation amount".

In response to Procedural Order No. 1, the Respondent, in a letter signed by Karen Fister, transmitted by email to the Center its response to the Complaint, stating: "The domain name greenpeel.com.au belongs to Advanced Laser Therapy Clinics Australia Pty Ltd and has been actively utilized by the business since its registration. It is an integral part of our business as we still rely on it to promote the product and our services. The loss of this domain name will result in our incurring financial loss". Attached to this communication were: (i) some pictures of what appears to be a poster in a window promoting Karen Fister and her services, on which appears the GREENPEEL trademark; (ii) documents confirming that the Respondent is the registrant of the disputed domain name; and (iii) invoices from Hamaya International Pty Ltd to the Respondent for various months in 2013 and 2014, at the top of which appears the name "Dr. med. Christine Schrammek", relating to various unidentified products, one of which is listed as "CP Green Peel Herbs 30gr".

6. Discussion and Findings

A. Identical or Confusingly Similar

When the country code Top-Level Domain ("ccTLD") identifier ".au" and the second-level extension of ".com" are ignored, the disputed domain name consists of the Complainant's GREENPEEL trademark. Thus, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent's case, as it can be best understood by the Panel, appears to be that it has rights or legitimate interests in the disputed domain name by virtue of its use of the Complainant's Green Peel products when supplying its "herbal peels" service. So understood, the Respondent's situation is similar to that of a reseller or distributor of trademarked goods – the difference being that, in this case, the Respondent is not reselling or distributing trademarked goods but instead is using those goods in delivering its services. In the Panel's view, the situation of use of trademarked goods in the supply of services is sufficiently analogous to that of resale of trademarked goods as to merit application of the principles that have been developed under the Policy to determine when a reseller of trademarked goods has rights or legitimate interests in a domain name that is identical or confusingly similar to the trademark.

As paragraph 2.3 of the auDA Overview of Panel Views on Selected auDRP Questions, First Edition ("auDRP Overview 1.0") explains, when considering whether a reseller or distributor of trademarked goods or services has rights or legitimate interests in a domain name that is identical or confusingly similar to the trademark, recent decisions of auDRP panels have adopted the principles set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the "Oki Data principles"), a case decided under the Uniform Domain Name Dispute Resolution Policy "UDRP"). Under the Oki Data principles, a reseller or distributor can be making a bona fide offering of goods and services, and thus have a legitimate interest in the domain name, if its use meets certain requirements. These requirements are: (i) the respondent must actually be offering goods or services related to the trademark in respect of which the domain name is confusingly similar; (ii) the respondent must offer only those goods or services in connection with the disputed domain name; (iii) the respondent must have disclosed its true relationship with the owner of the trademark to which the domain name is identical or confusingly similar, prior to notice of the dispute; and (iv) the respondent must not have attempted to "corner the market" in domain names that reflect that trademark.

The evidence provided by the Respondent is scant, to say the least. The Panel is willing to conclude that the Respondent's evidence demonstrates that the Respondent satisfies the first requirement of the Oki Data principles. However, that evidence does not demonstrate that the Respondent satisfies either the second requirement or the third requirement. Furthermore, in this Panel's view, the fact that the disputed domain name is identical to – in the sense that it consists solely of – the Complainant's trademark is sufficient to demonstrate that the Respondent does not satisfy the fourth requirement of the Oki Data principles.

Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered or Subsequently Used in Bad Faith

It is clear from the evidence in the case record that the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to its website. Given the Panel's conclusions, above, that the disputed domain name is identical to the Complainant's trademark, and that the Respondent has no rights or legitimate interests in the disputed domain name, it follows that the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of that website. According to paragraph 4(b)(iv) of the Policy, this is evidence of bad faith.

For all of the above reasons, this Panel is satisfied that the disputed domain name is being used in bad faith.

D. Complainant's Eligibility

The Complainant has requested transfer of the disputed domain name. Given that the Complainant owns an Australian registered trademark that is identical to the disputed domain name, the Complainant appears to satisfy the eligibility requirements for registration of the disputed domain name.

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 <greenpeel.com.au> be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: December 21, 2014