WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Klein-Becker IP Holdings, LLC v. Symblic Systems Pty Ltd
Case No. D2006-0498
1. The Parties
The Complainant is Klein-Becker IP Holdings, Carson City, Nevada, United States of America, represented by Morriss O’Bryant Compagni, P.C., United States of America.
The Respondent is Symblic Systems Pty Ltd, Canberra, Australia.
2. The Domain Name and Registrar
The disputed domain name is registered with Primus Telecommunications t/a PlanetDomain & PrimusDomain.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2006. On April 20, 2006, the Center transmitted by email to Primus Telecommunications t/a PlanetDomain & PrimusDomain a request for registrar verification in connection with the domain name at issue. On April 28, 2006, Primus Telecommunications t/a PlanetDomain & PrimusDomain transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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”).
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 April 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May�18,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2006.
The Center appointed Ross Carson as the sole panelist in this matter on May 24, 2006. 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.
The Center forwarded Administrative Panel Procedural Order No.1 to Complainant on June 8, 2006, requesting Complainant to file proof of rights in the STRIVECTIN-SD registered trademarks attached as Annex 5 to the Complaint. The Complainant was further requested to file a statement certifying that the information contained in the submission is to the Complainants knowledge complete and accurate. On June�7,�2006, Complainant filed a Response to Administrative Order No. 1 attaching as Annex S1 Assignment documents establishing the transfer of the STRIVECTIN and STRIVECTIN-SD trademark registrations and applications to Complainant. The Complainant also provided the requested certifying statement.
4. Factual Background
Complainant is the owner of the trademarks STRIVECTIN and STRIVECTIN-SD, which are used in connection with cosmetics. The STRIVECTIN-SD mark has been used by Complainant in connection with cosmetics since at least as early as August�16,�2002, and is well-known in the cosmetic industry. The STRIVECTIN marks are used around the world by Complainant for cosmetics. The STRIVECTIN-SD mark is registered to Complainant in at least eight (8) countries. Further, the STRIVECTIN mark is registered in Australia as Trademark Registration Number 974098. A schedule of those countries and the registration numbers and copies of the registration certificates are attached to the Complaint as Annex 5. Proof of assignments of the registered trademarks and applications are attached as Annex 1S to the submission in response to Procedural Order No.1. Additionally, U.S. Trademark Application Serial No 78/479381 for STRIVECTIN has been published for opposition in the United States. A copy of the U.S. Notice of Publication is attached as Annex 6 to the Complaint.
Complainant uses the marks STRIVECTIN and STRIVECTIN-SD as domain names, holding at least the domain names , , , , , , , , , and . Copies of printouts from the Whois database of GoD showing the details of these registrations are attached as Annex 7 to the Complaint. Complainant sells its product with which the STRIVECTIN and STRIVECTIN-SD marks are used through both retail stores and its STRIVECTIN website, a copy of a page from which is attached as Annex 8 to Complaint.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
Complainant submits that the domain name in this dispute , directly incorporates the Complainant’s trademarks. Respondent’s registration of the domain name in dispute incorporates Complainant’s mark with the only difference being the addition of the generic word “explained”. The addition of the generic word “explained” fails to create a distinct and separate mark, and the domain name in dispute is thus confusingly similar to Complainants registered trademarks. See G.D. Searle & Co. v. Per Ronnlund, National Arbitration Forum, NAF116896,2002 (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word).
No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that Respondent lacks any rights or legitimate interests in the trademark STRIVECTIN or the trademark STRIVECTIN-SD as it is not an authorized dealer of the goods in connection with which the mark is used, nor is it licensed to use such trademarks. Further, Complainant submits that Respondent is neither making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, nor is Respondent commonly known by this domain name.
Complainant further submits that the domain name appears to be in use by Respondent for a website that appears as an advertisement for Complainant’s product offered under the STRIVECTIN and STRIVECTIN-SD names, and featuring links to one or more vendors from whom the product may be purchased. It appears that Respondent is paid for sending visitors to the vendors, under an affiliate program. A copy of a printout showing the website at this URL of the concerned domain name is attached as Annex 10 to Complaint.
Complainant further submits that Respondent’s use of Complainant’s trademark as a domain name is not reasonably necessary to allow resale of Complainant’s products by Respondent. To the contrary, Respondent could use any domain name at all and still sell Complainant’s products through its website. Thus, this use confers no right or legitimate interest in the domain name to Respondent. Further not even an authorized reseller of a product has the right to use the licensor’s trademark as a domain name without a specific agreement between the parties. Not only is such an agreement lacking here, Respondent is not an authorized reseller of the branded product. Further, Complainant has been unable to find any rights or legitimate interest that Respondent may have in the term “strivectin”. On March 21, 2006 a search of the Australian Trade Mark On-line Search System (“ATMOSS”) accessible through the IP Australia Website was conducted for the trademark STRIVECTIN The results of this search are attached as Annex 12 to Complaint. This search shows that the Respondent has no trademark applications or registrations for marks including the term “strivectin” in its home jurisdiction of Australia. Instead, the only results located for active trademark registrations or applications are those belonging to Complainant. As explained at paragraphs 6.9 and 6.10 of Educational Testing Service v. Netkorea Co., WIPO Case No. D2000-0087 , such a search should be deemed to be sufficient evidence to satisfy Complainant’s burden regarding Respondent’s lack of rights or legitimate interests under Paragraph 4(a)(i) of the Policy. As explained therein, the burden on a complainant in respect of this element is, by necessity, relatively light and Respondent has ample opportunity to rebut under paragraph 4(c) of the Policy.
Registered and Used in Bad Faith
Complainant submits that as stated herein above, Respondent lacks any rights or legitimate interests in the trademark STRIVECTIN or the trademark STRIVECTIN-SD. Therefore, registration of the domain name was without any legitimate purpose or intent.
Complainant further submits that since Respondent is not licensed to use the Complainant’s trademarks, it can only be concluded that the Respondent’s sole purpose was to divert business away from the Complainant by obtaining a domain name registration which is essentially identical to or confusingly similar to the Complainant’s trademarks.
As explained in Slep-Tone Entertainment Corporation d/b/a/ Sound Choice Accompaniment Tracks v. Sound Choice Disc Jockeys, Inc., NAF FA00093636 (NAF 2002), under paragraph 2 of the Policy , a domain name registrant represents and warrants to the domain name registrar that to the registrant’s knowledge, “the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.” The same paragraph further charges the registrant with the responsibility to “determine whether your domain name registration infringes or violates someone else’s rights.” In Slep-Tone, the panel held that in proceeding to register and use the domain name, , the respondent had failed to discharge its contractual obligation to determine that its domain name does not infringe the rights of a third party, deeming it had notice of a third party with an interest in the name “soundchoice” since it certainly must have known that the domain name was unavailable. The panel stated that as the respondent had notice of a third party’s interest in the domain name, it had an obligation to investigate the extent of that interest and to refrain from registering and using a domain name that infringes that third party’s rights, but had failed to do so. Accordingly, the panel concluded the domain name was considered as having been registered and used in bad faith.
In the present case, the Respondent’s obligations under paragraph 2 of the Policy required it to represent and warrant that the registration of the concerned domain name would not infringe upon or otherwise violate the rights of any third party under its responsibility to determine whether such domain name registration infringes or violates someone else’s rights. As of the date Respondent registered the domain name (November 15, 2004), Complainant had registrations for the domain names , , , , , , , and . As noted above, copies of printouts from the Whois database of GoD showing the details of these registrations are attached as Annex 7 to Complaint. As Respondent certainly must have known such domain names were unavailable, it had an obligation to investigate the extent of that interest and to refrain from registering and using a domain name that infringes that third party’s rights, but failed to do so. Thus, the domain name in dispute should be concluded to have been registered and used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this 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”.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The fact that the Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. The failure of the Respondent to file a Reply results in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. See Charles Jourdan Holding, AG v. AAIM, WIPO Case No. D2000-0403.
A. Identical or Confusingly Similar
Pursuant to Paragraph 4(a)(i) of the Policy the Complainant must establish rights in a trademark and secondly that the domain name in dispute is confusingly similar to the trademark in which the Complainant has rights.
The Complainant has established that it is registered as the owner of eight trademark registrations for the trademark STRIVECTIN-SD registered in eight different countries as set out in paragraph 4 above. Complainant is also the owner of a trademark registration in Ausralia and applications in many countries for STRIVECTIN. The trademarks for or including STRIVECTIN have been used throughout the world by Complainant and are well known in the cosmetic industry.
The domain name in dispute is identical to Complainant’s registered trademarks for or including STRIVECTIN in sound and idea suggested by the trademark, but differs in appearance by the addition of the common word “explained”. The trademark STRIVECTIN is the distinctive element of the domain name in dispute. The word “explained” found in the domain name in dispute is descriptive and nondistictive. The use of “strivectin” in the domain name in dispute results in a confusingly similar use of the Complainant’s trademarks for and including STRIVECTIN.
The Panel finds that the Complainant has proven that the domain name in dispute is confusingly similar to the Complainant’s registered trademarks for or including STRIVECTIN.
B. Rights or Legitimate Interests
Pursuant to Paragraph 4(a)(ii) of the Policy Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent has no Australian trademark registration or application for trademarks for or including STRIVECTIN.
The Respondent is not affiliated with the Complainant and has never been authorized by the Complainant to use the STRIVECTIN trademark or any trademark confusingly similar thereto.
The domain name is used by Respondent for a website that advertises both Complainant’s products and products offered by competitors of Complainant. One advertisement of a competitor of Complainant found on Respondent’s adsense website reads:”Renewal-Rx vs Strivectin” “Same Formula for Only $33.95 RemovesWrinkles and Stretch Marks.” The Respondents webpage associated with the domain name in dispute is attached as Annex 10 to Complaint. The use of the domain name in dispute to advertise competitors products is not a legitimate use of the domain name.
Respondent did not file any evidence to demonstrate Respondents rights or legitimate interests in the domain name in dispute as it was entitled to do pursuant to paragraph 4.{c.} of the Policy.
The Panel finds that the Complainant has proven that the Respondent does not have any rights or legitimate interests in the domain name in dispute.
C. Registered and Used in Bad Faith
As explained above under section 6B., Respondent used the domain name in dispute to intentionally attract internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s website. Lily ICOS LLC v. Brian Focker, WIPO Case No. D2005-0729.
The Panel finds that Complainant has proven that Respondent registered and used the domain name in dispute in bad faith as set out in paragraph 4.(b.)(iv) 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 be transferred to the Complainant.
Ross Carson
Sole Panelist
Dated: June 14, 2006
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