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

Domain Name Clean-up

Since 1980, Complainant has owned and used the service mark "Merry Maids" for use in connection with commercial and residential cleaning services.  It registered the domain name "merrymaids.com" in 1994 to direct Internet users to a commercial website promoting its services and those of its franchisees.

Complainant found it dirty pool when Respondent, Mary's Maid to Order, registered the domain name "marysmaids.com" for usage with a web portal homepage providing a  search function and listing a variety of cleaning related services, including "Maid Service", "Merry Maid Cleaning" and others.

Arguing that the disputed domain name is confusingly similar to its service mark, Complainant alleged that Respondent was using a "homonym to capitalize on Complainants' marks".

Denying the Complaint, the Panel made its determination based upon factors typically assessed in a trademark infringement proceeding, taking into account unique features of the Internet.  In so doing, the Panel noted that Complainant's "Merry Maids" service mark is synonymous with a "happy cleaning service provider", formed by common, highly descriptive terms and constituting a "weak" service mark.  Since "maids" is a generic term for cleaning service providers, the Panel held that Complainant's mark must be compared for confusing similarity on the basis of the adjectival term "merry" and the possessive term used in the disputed domain name, "marys".  Holding that the terms were not confusingly similar, the Panel observed in detail the different visual impression and sound between the terms (including one "r" versus two; and the difference in vowels), as well as the difference in meaning between "merry" (synonymous with happy) and "Mary" (a given name).

Of particular note in the Panel's denial of the Complaint, the Panel rejected Complainant's argument that a common typographical error may result in Internet users being taken to Respondent's, not Complainant's, website.  While keyboard users can mis-type almost anything, the Panel was doubtful that "marysmaids.com" could be inadvertently typed for "merrymaids" and that the mere possibility of such mis-typing was not enough to give Complainant' more extensive rights in its mark. In the Panel's opinion, to give Complainant rights in "marysmaids.com" would be substantially expanding Complainant's dominion over the universe of "-maids" combination terms, which the Panel was disinclined to do.

Merry Maids, Inc., ServiceMaster Brands, L.L.C. v. Mary's Maid to Order, WIPO Case No. D2007-1283

It's Tax Time...Rapid Refund for Domain Name

The Complainant is HRB Royalty, Inc., a wholly owned indirect subsidiary of H&R Block, Inc. and part of a family company (collectively, H&R Block) making up the largest provider of individual income tax preparation services in the United States.  H&R Block has used and owns the trademark "RAPIDREFUND" and related marks since at least 1986 in connection with its tax services business.

Complainant was not pleased to learn through a reverse Whois search that the Respondent owned and operated a website using the domain name "ezrapidrefund.com" to market indirectly a competing service.  The site appeared to promote rapid (tax) refund specialists and obtaining maximum refunds for its clients, stating that it will get "the best refund no matter how simple or complicated the return may be".

Respondent failed to respond to 2 separate cease and desist letters sent by Complainant, prompting the Complainant's commencement of its WIPO proceeding. Respondent failed to submit a response to that as well.

Ordering transfer of the disputed domain name, the Panel noted that the addition of the prefix "ez" to Complainaint's trademark was immaterial and accepted the Complainant's submission that the registration of the domain was intentionally used as an attempt to attract for commercial gain internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark. The Panel further took into account the Respondent's failure on not one, but on 3 separate occasions to counter the Complainant's assertions against, warranting an "ez" decision to transfer the domain.  HRB Royalty, Inc. v. Charlenia Owens, WIPO Case No. D2007-16