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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Melaleuca, Inc. v. Wang Xiao Ping

Case No. D2008-1587

1. The Parties

The Complainant is Melaleuca, Inc., of Idaho Falls, Idaho, United States of America, represented by Hawley Troxell Ennis & Hawley LLP, United States.

The Respondent is Wang Xiao Ping, of Shanghai, People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <melalauca.com> is registered with Direct Information Pvt. Ltd d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2008. On October 21, 2008, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On October 22, 2008, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 29, 2008.

In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2008. An email Response was filed with the Center on November 17, 2008 by the Respondent.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on November 25, 2008. The Panel finds that it is 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 the owner of the trademark MELALEUCA and has obtained United States Federal Trademark Registration No. 1,917,518, dated September 12, 1995 for its mark. The document of registration shows that the Complainant has used the mark in commerce from 1985, for health care and household products under international classes 3 and 5.

The disputed domain name was registered on April 24, 2007.

5. Parties’ Contentions

A. Complainant

The Complainant contends that, under the United States Lanham Act, 15 U.S.C. Section 1072, its federal trademark registration is conclusive proof of its rights in the MELALEUCA mark, and is strong evidence of its continuous use of the mark since September 1985. The Complainant states that it uses its website “www.melaleuca.com”, to market its products through its online “Melaleuca Product Store”. It also sells its goods to China, through its website at “www.melaleuca.com.cn”, where the Respondent is resident.

To emphasize its significant rights in the mark, the Complainant states its mark has reached the status of an incontestable mark under the Lanham Act Section 15 (15 U.S.C Section 1065). It further states that its mark is entitled to strong enforcement and protection under 15 U.S.C. Section 1115 (b) of the same legislation.

The disputed domain name is identical to its registered mark, alleges the Complainant, except for one letter. The second letter “e” in the mark is substituted with a letter “a” in the domain name. The Complainant contends that it is likely for users to make this common mistake while entering the Complainant’s website address and that the Respondent has designed the domain name to take advantage of such user mistakes. The Complainant cites Future Bazaar India Ltd. v. Rashid Arashid, Chen Xianshang, Bao Shui Chen WIPO Case No. D2008-0175 and several other cases to support its contention that the purposeful misspellings of a known mark in a domain name, is confusingly similar to the mark.

The Complainant contends that the Respondent should be considered as having no rights and legitimate interests in the domain name for the reasons that the Respondent.

(either as an individual, business, or other organization) is not commonly known as MELALAUCA or other similar name. There is no evidence to suggest that the domain name has become synonymous with Wang Xiao Ping, the Respondent here. The Complainant has not licensed or permitted the Respondent to use its marks. Further, there is no evidence that the Respondent is making a bona fide offering of goods or services or of any of legitimate noncommercial fair use of the domain name.

The Complainant alleges that the Respondent has selected a misspelling of the mark for the sole purpose luring Internet users to his own website, which is not a bona fide offering of goods or services or noncommercial fair use of the domain name. The Respondent has provided links on topics such as “Women’s Health”, “Discount Vitamins” and” Healthy Foods” for attracting users to his site, and on clicking these, the user is redirected to another page with sponsored listing relating to that subject.

The Complainant advances the following arguments to supports its contentions of bad faith registration and use by the Respondent. The Respondent has registered the domain name on April 24, 2007, which is more than twenty years after the Complainant started using the mark in commerce and after a period of eleven years since the Complainant received its Federal registration for its mark. The Complainant states that the Respondent is intentionally trying to take advantage of user’s disposition to misspell domain names in an attempted to attract Internet users to its site by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its site.

Based on paragraph 4(b)(ii) of the Policy, the Complainant states that bad faith registration and use can be found if the Respondent has engaged in a pattern of conduct to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. The Complainant puts forward the following arguments to show that the Respondent or an agent of the Respondent has been involved in such a pattern for being involved in at least one such prior administrative proceeding.

In Future Bazaar, supra the Complainant alleges bad faith was found regarding Chen Xianshang, who acted as an agent of a respondent who had engaged in a pattern of registering domain names abusive of the Policy. The Complainant further states that the same Chen Xianshang is likely to be involved in the registration of the disputed domain name in the present case, as the name Chen Xianshang is shown as a previous registrant of the domain name in dispute.

On July 20, 2008, the Complainant states that the name of the registrant was changed from Chen Xianshang to Shen Xiao Ping and sometime later it was changed to Wang Xiao Ping, who is the current registrant and allegedly owns 426 domain names. The Complainant states that the present registrant Wang Xiao Ping is the likely agent of Chen Xian Shang, who is a notorious typosquatter. The Complainant therefore requests the Panel to find bad faith on the part of the Respondent based on Chen Xian Shang’s pattern of conduct of registering domain names.

The Complainant requests for the transfer of the domain name.

B. Respondent

The Respondent, Wang Xiao Ping, sent a brief email to the Center, dated November 17, 2008. In a concise and terse email, the Respondent states, the word

“Melaleuca” is the name of a plant and adds that “melalauca” is a common misspelling (alternative spelling) for the name of this plant, which is a generic word.

The Respondent has substantiated his contentions with supporting documents. A write up from Wikipedia on melaleuca, has been provided by the Respondent to support its contentions that the word “melaleuca” is a generic word. The Wikipedia information states that melaleuca is a genus of plants in the myrtle family Myrtaceae. The article goes on to say, one well-known malaleuca, the Ti tree (aka tea tree), is notable for its essential oil which is both anti-fungal and antibiotic, and safe for topical applications. It is produced on a commercial scale, and marketed as Tea Tree Oil.

The Respondent has filed a copy of a National Arbitration Forum decision, Virtual Dates, Inc. v. Xedoc Holding SA, NAF Claim No. 433802, stating that: “a similar example of a UDRP case which was denied is: voyeur.com vs. voyeur.com.”. The Respondent purportedly relies on the above mentioned decision to show that a domain name registration, which is the misspelling of a generic word trademark, was found not violating the Policy.

Lastly, the Respondent mentions that he does not feel it is worth while trying to pursue or defend the present case. The reason given by the Respondent is that the domain name is of such low monetary value, that it is just not worth his time trying to send a “proper” response to defend the case. The verbatim statement made by the Respondent is: “Sorry can’t spend more time to fill proper response for a domain worth may be 50 bucks.”

No other communication or formal response was received from the Respondent other than this email. As it is the only submission made by the Respondent, the Panel shall treat the email submission as the Respondent’s Response in these proceedings.

6. Discussion and Findings

Supplemental Submission

The Complainant has sent a supplemental submission by email, in response to the Respondent’s response. In prior cases where complainants sought to file supplemental filings, purportedly in response to the Respondent’s response, panels have declined to entertain unsolicited supplemental submissions, See Ontos AG v. Ontos Institute, Antony Arcari, WIPO Case No. D2006-0647 and Plan.Net concept Spezialagentur fur interactive kommunikation GmbH v. Murat Yikilmaz, WIPO Case No. D2006-0082.

The Policy and Rules provide for only a single submission by the parties. Panels generally do not favor multiple supplementary submissions by the parties, absent exceptional circumstances, See Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427. The Panel finds that there are no exceptional circumstances in the present case to justify allowing the unsolicited supplemental submissions sent by the Complainant.

Accordingly, the Panel will not consider the Complainant’s supplemental submission, for the reasons discussed above.

The Policy requires the Complainant in a domain name dispute to establish the three elements given under paragraph 4(a) of the Policy to obtain the remedy of transfer of the domain name. These three elements are:

(a) The domain name registered by the Respondent is identical or confusingly similar to a mark in which the Complainant has rights; and

(b) The Respondent has no rights or legitimate interests in respect of the domain name; and

(c) The domain name was registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The first element under paragraph 4(a) of the Policy requires the Complainant to establish that the domain name registered by the Respondent is identical or confusingly similar to a mark in which it has rights.

The Panel finds that the Respondent’s submissions have successfully established that “melaleuca” is a generic word. Trademark law allows the use of generic words as trade marks, (See Amazon.com, Inc v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517 where the generic word “amazon” is used as a trademark), provided that, the owner of the mark can show that the mark has acquired secondary meaning and has become distinctive of its goods and services. Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083.

The Complainant has provided documentary evidence of its ownership rights in the “Melaleuca” mark, and its use in commerce from the year 1985, which establishes the distinctive rights in the mark and its incontestable status, which establishes that the mark has acquired secondary meaning. Although the Complainant’s mark is a generic word, the Panel is convinced of the Complainant’s long standing rights in the mark has acquired secondary meaning as an identifier of its goods.

In the National Arbitration Forum Case, Virtual Dates, Inc., supra which cited by the Respondent, the Panel finds is a case decided under different circumstances from that of the present case. Firstly, in the Virtual Dates case the respondent’s rights there had preceded the complainant’s alleged use of the mark in commerce. The differently spelled domain name was registered by that respondent, before the complainant’s use of the mark in commerce, which is not the case here. Secondly, the complainant in that case could not establish any secondary meaning attached to the mark and it was found that the alleged mark was only registered on the supplemental register. In the present case the Complainant has established its long standing rights in its mark which has reached incontestable status under the Lanham Act.

The Panel finds validity in the Complainant’s argument the substitution of the letter “e” in the mark with an “a” in the domain name is an attempt at typosquatting or purposeful misspelling of the mark to attract Internet users. Further, the Respondent has admitted that “melalauca” is a common misspelling of the word “Melaleuca”. Registering of a domain name as a common misspelling of a well established trademark is called typosquatting, Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150.

The Panel therefore finds, for the reasons discussed above the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The second element under paragraph 4(a) of the Policy, requires the Complainant to, at minimum, present a prima facie case that the Respondent lacks rights or legitimate interests in the domain name. Once the Complainant has made a prima facie case, the burden shifts to the Respondent to refute the Complainant’s averments to show that it has legitimate rights in the domain name under paragraph 4(c) of the Policy. (See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1)

The Respondent has raised the defense that its domain name is the misspelling of a generic word. Whether the Respondent can claim rights in the domain name because it is a misspelling of a generic word has been discussed in previous section. The Panel has noted that under the circumstances in the present case, the Respondent lacks rights for the reasons discussed above.

The Respondent can prove that rights or legitimate interests in the domain name by showing that it has been commonly known by the domain name or that it has used or made preparations to use the domain name for a bona fide offering of goods or services, prior to any notice of the dispute. The Respondent has however not placed any such evidence before this Panel. Further, the Complainant has categorically stated that it has given no authorization to the Respondent to use its mark in the domain name. In the absence of any evidence to show the Respondent’s rights as discussed above, the Panel finds that the use of a common misspelling of the Complainant’s mark in the domain name is not a legitimate use.

The manner of use of the domain name is also germane for determining rights and legitimate interests. The Respondent is entitled to claim rights if the domain name is used for any legitimate noncommercial or fair use without intent of commercial gain and without misleading and diverting customers and users. Here the Panel finds that the Respondent has placed links on his website which are in direct competition with the Complainant’s area of business. The use of a domain name which is identical or confusingly similar to the Complainant’s trademark with an intention of deriving advantage from user confusion and diverting Internet users to other commercial sites by the Respondent does not confer legitimate rights on the Respondent. See for instance, Bridgestone Corporation v. Horoshiy, Inc. WIPO Case No. D2004-0795.

The Panel is satisfied that the Complainant has established under paragraph 4(a)(ii) of the Policy that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the domain name was registered and used in bad faith by the Respondent.

Paragraph 4(b) of the Policy enumerates a set of four non-exclusive circumstances, any of which, if found present, would demonstrate the domain name was registered and used in bad faith by the Respondent. The Complainant in the present case alleges bad faith on two grounds under paragraph 4(b):

- Under paragraph 4(b)(ii), the Complainant has alleged that the Respondent has engaged in a pattern of registering trademarks of others to prevent the use of the domain name by the trademark owner.

- Under paragraph 4(b)(iv), the Complainant has alleged the Respondent has intentionally attempted to attract Internet users to its site by creating a likelihood of confusion as to the source, sponsorship, affiliation and endorsement of its site.

Regarding the Complainant’s allegations, under paragraph 4(b)(ii) of the Policy, that the Respondent acted in bad faith by engaging in a pattern of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. The Panel finds this allegation is unsupported by the Complainant and is unfounded.

It was observed in K2r Produkte AG v. Jeremie Trigano, WIPO Case No. D2000-0622, that the term “pattern” has been defined in the Merriam WebSter’s Collegiate Dictionary, as a frequent or widespread incidence. The Complainant here has put forward only one instance where the Respondent in the present case, Wang Xiao Ping has been named in a previous case, and that too, only as a “possible” agent of Chen Xianshang. Further, Chen Xianshang is not named as a Respondent in the present case, nor has the Complainant provided any evidence to establish any relation between Chen Xianshang and the present Respondent. The Panel finds the Complainant has failed to substantiate its contentions and establish bad faith under paragraph 4(b)(ii).

Regarding the allegation of bad faith made under paragraph 4(b)(iv) by the Complainant that the Respondent has intentionally attempted to attract Internet users to its site by creating a likelihood of confusion as to the source of sponsorship. The Panel has considered the evidence and finds the following factors are present:

The Complainant has established that it has rights in the mark through long use in commerce. Further, the print out of the Respondent’s website shows that the Respondent has placed on its website links to other sites directly competing with the Complainant in the area of healthcare and household products. The placing of links per se, on a website in anticipation of deriving revenue can in certain circumstances be considered a legitimate form of business. However, placing links on a site which uses a confusingly similar trademark of a third party in the domain name to generate Internet traffic that trades on such mark has been recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy. (See Bayer HealthCare LLC v. Shen Kaixin, WIPO Case No. D2008-1350).

The Panel finds the Respondent here is trying to capitalize on user confusion and create a false association with the Complainant. The preponderance of evidence on record establishes that the Respondent has incorporated or used the Complainant’s mark in the disputed domain name in an attempt to intentionally create a likelihood of confusion as to the source, sponsorship, affiliation and endorsement of its site. The Panel therefore finds that bad faith is proven as per the circumstances mentioned in paragraph 4(b)(iv) of the Policy.

The Panel is satisfied that the Complainant has established the requirement under paragraph 4(a)(iii) of the Policy.

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 <melalauca.com> be transferred to the Complainant.

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Harini Narayanswamy
Sole Panelist

Dated: December 9, 2008