Domain Name Day at the Spa
The Complainant operates a business based in Los Angeles, California, supplying nail and body care products under the mark SPARITUAL. Complainant has registered the mark in various countries, including the USA and Mexico, and has pending applications to register the mark in other countries, including Canada.
Respondent is a consultant to a business operating under the name "The Spa Ritual" in Calgary, Canada. The disputed domain name, "sparitual.com", was registered by Complainant on the business' behalf on October 19, 2006 and points to a website promoting the spa and its facilities, including a boutique selling body care products and noting "Check back soon for online shopping of our exclusive Spa Ritual products".
The Panel denied the Complaint on the evidence that Respondent made demonstrable preparations to use the domain name and the corresponding name "The Spa Ritual" in connection with a bona fide offering of services before any notice to her of a dispute. This evidence included Respondent's retention since 2005 as a consultant to establish, develop, own and operate a full-service day spa in Calgary, Canada and, in connection with that retention, Respondent's preparation of a site assessment report, a strategic business plan, the retention of a design firm which made a proposal regarding branding and a logo, and Respondent's preparation of a concept document which included a proposed layout and design for the spa prior to its opening. Although Complainant asserted that it had made sales in Canada since at least February 2005, there was no evidence of the extent of those sales and no basis to infer that Respondent must have been aware of them at any particular point in time.
Significantly, the Panel opined that an application to register a trademark in the United States or other countries does not of itself constitute notice of a dispute to a party in Canada for purposes of paragraph 4(c)(i) of the Policy and that the doctrine of constructive notice under US trademark law does not assist in cases under the UDRP where the respondent is outside the USA. SpaRitual, LLC v. Vivienne O'Keeffe, WIPO Case No. D2009-0066