WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Spenco Medical Corporation v. Transure Enterprise Ltd Case No. D2009-1765 1. The Parties
The Complainant is Spenco Medical Corporation of Waco, Texas, United States of America, represented by Sidley Austin LLP, United States of America.
The Respondent is Transure Enterprise Ltd of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with A, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2009. On December 23, 2009, the Center transmitted by email to A, Inc. a request for registrar verification in connection with the disputed domain name. On December 24, 2009, A, Inc. 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 Domain Name. The Center verified that 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 January 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on January 29, 2010.
The Center appointed Warwick Smith as the sole panelist in this matter on February 5, 2010. 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.
In the absence of a Response to the Complaint, the Panel has checked the record to ensure that the Center has discharged its obligation under the Rules to notify the Complaint to the Respondent. The Panel is satisfied that the Center has done so. 4. Factual Background The Complainant
The following facts are taken from the uncontested statements made in the Complaint. The Complainant is the owner of the trademark 2ND SKIN, in respect of wound care and fist aid products. The Complainant has continuously used its 2ND SKIN mark since 1980, and it holds numerous trademark registrations for that mark around the world. Those registrations include a United States registration effected on February 16, 1988, a Community registration effected on February 18, 2000, and a United Kingdom registration effected on May 18, 1992.
In addition, the Complainant is the owner of a number of “2ND SKIN” domain names, including registered on July 20, 1998, and registered on May 14, 2002. The Respondent and the Domain Name
The Domain Name was registered on September 15, 2009. According to the Complaint, the Respondent does not have any trademark rights in the Domain Name. Nor has the Complainant authorized the Respondent to apply for any domain name incorporating the Complainant's trademark.
The Domain Name points to a website (“the Respondent's website”) which serves as a landing page, with links to third party websites offering various goods or services. The copy of the Respondent's website which the Complainant produced, printed on December 11, 2009, showed that many of the links were to websites offering the Complainant's products (as well as various other “skin” and “skin-care” related products). When the Panel visited the Respondent's website on February 8, 2010, it did not note any references to the Complainant's products, although there were still a number of links to websites offering skincare products (in addition to more general links). Complainant's Attempts to recover the Domain Name
The Complainant became aware of the Domain Name in late July 2009. On August 11, 2009, it sent a cease and desist letter to the then-registrant, requesting that the Domain Name be transferred to the Complainant. The Complainant did not receive any reply to that letter.
On September 15, 2009, the Domain Name was transferred to the Respondent.
The Respondent used the Registrar's domain privacy service when it registered the Domain Name. The Complainant sent a letter of demand to that service on September 22, 2009, demanding the transfer of the Domain Name to the Complainant. The Registrar responded, advising the identity and address details of the Respondent. The Complainant sent a further cease and desist letter on September 29, 2009, this time to the Respondent.
On November 10, 2009, the Complainant received an email reply from a Mr David Smith, offering to sell the Domain Name to the Complainant for USD 500 (said to be the total of the Respondent's “registration and administration fees”). Other Administrative Proceedings in which the Respondent has been named as Respondent
The Complainant referred to a total of nine administrative proceedings under the Policy in which the Respondent has been found to have registered domain names in bad faith. Those cases were Wolters Kluwer U.S. Corp. v. Transure Enterprise Ltd.,WIPO Case No. D2008-0384; F. Hoffmann-La Roche AG v. Transure Enterprise Ltd.,WIPO Case No. D2008-0422; Harrods Ltd v. Harrods, Transure Enterprise Ltd.,WIPO Case No. D2008-1687; International Organization for Standardization ISO v. Transure Enterprise Ltd, Host Master,WIPO Case No. D2008-1184; Sanofi-Aventis v. Transure Enterprise Ltd, Host Master,WIPO Case No. D2008-1636; Osram v. Transure Enterprise Ltd.,WIPO Case No. D2009-0010; Intesa San Paolo v. Transure Enterprise. Ltd.,WIPO Case No. D2008-1754; Air France, Koninklijke Luchtvaart Maatschappij v. Transure Enterprise Ltd.,WIPO Case No. D2008-1304; Wagamama Ltd. v. Transure Enterprise Ltd.,WIPO Case No. D2008-1200. 5. Parties' Contentions A. Complainant
The Complainant contends:
1. The Domain Name is identical to the Complainant's 2ND SKIN trademark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following:
(i) The Respondent has no trademark or other intellectual property rights in the Domain Name.
(ii) The Respondent has no connection with the Complainant, and the Complainant has not authorized the Respondent to use or apply for any domain name incorporating the Complainant's trademark.
(iii) There is no indication that the Respondent uses the Domain Name as its legal or business name, or that it is commonly known by “2nd skin”.
(iv) The Respondent has not been using the Domain Name in connection with a bona fide offering of goods or services. It is simply seeking to capitalise on browsers looking for the Complainant's 2ND SKIN products.
(v) Merely redirecting Internet traffic, which is the only function the Respondent's website performs, is not a bona fide offering of services.
(vi) The Respondent would not have chosen the Domain Name unless it was seeking to create the impression that there was some association with the Complainant.
3. The Domain Name was registered and is being used in bad faith, having regard to the following:
(i) The transfer of the Domain Name on September 15, 2009 was a successful attempt at cyberflight. The previous registrant, Swallowlane Holdings Limited, has been involved in suspected cyberflying in the past (see Canadian Tire Corporation Limited v. Swallowlane Holdings Limited,WIPO Case No. D2009-0828). Various UDRP panels have held that cyberflying is an indication of bad faith (citing CompuCredit Corporation, CompuCredit Intellectual Property Holdings Corporation III v. Domain Capital and Aspire Prints,WIPO Case No. D2007-0407), and Madonna Ciccone p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847).
(ii) When the Respondent registered the Domain Name, it was tasked with verifying whether the registration would infringe any third party trademarks. Given the Complainant's numerous 2ND SKIN trademark registrations, and its continuous and uninterrupted use of that mark for almost 30 years, it is not plausible that the Respondent was unaware of the Complainant's 2ND SKIN mark at the time of registration of the Domain Name. That is confirmed by the fact that there are references to the Complainant and its 2ND SKIN mark on the Respondent's website. Registration of a well-known trade mark of which a respondent must have been aware, may of itself be sufficient proof of registration in bad faith.
(iii) The Respondent's offer (through the email from David Smith) to sell the Domain Name to the Complainant for USD 500 supports the inference that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant, or to a competitor, for a consideration in excess of the Respondent's out-of-pocket costs.
(iv) While awaiting a sale of the Domain Name, the Respondent has been earning pay-per-click revenue from the sponsored links on the Respondent's website. In so doing, the Respondent has been attempting to attract Internet users, for commercial purposes, to the Respondent's website, by creating a likelihood of confusion with the Complainant's trademark as to the source or endorsement of the Respondent's website.
(v) Consumers expect to find a company on the Internet at a domain name that includes that company's name or mark (citing Panavision International, LP v. Toeppen, 141F. 3d 1316, 1327 (US Court of Appeals, 9th Circuit, 1998).
(vi) The previous cases where the Respondent has been held to have acted in bad faith show that the Respondent is a serial infringer, whose sole business is to mislead and co-opt Internet users by registering domain names that are confusingly similar to the legitimate marks and domain names of others. That is decisive evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. What the Complainant must prove under the Policy - General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the 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”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate. B. Identical or Confusingly Similar
The Complainant has proved this part of the Complaint. It is the registered proprietor of the mark 2ND SKIN in numerous jurisdictions, and the Domain Name is identical to that trademark. (The generic suffix “.net” is not taken into account in the comparison.) C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”
In this case, the Complainant has not authorized the Respondent to use the Complainant's 2ND SKIN mark, whether in a domain name or otherwise. There is no connection between the parties, and there is nothing in the evidence to suggest that the Respondent (or some business operated by the Respondent) might be commonly known by the Domain Name. There is therefore nothing which suggests that the Respondent might have a defence under paragraph 4(c)(ii) of the Policy.
That combination of circumstances is sufficient prima facie proof that the Respondent has no rights or legitimate interests in respect of the Domain Name. The evidentiary onus therefore shifts to the Respondent. As no Response has been filed, the Respondent has failed to discharge that onus, and the Complainant therefore succeeds on this part of its Complaint.
For completeness, the Panel notes that, for the reasons which are set out in the next part of this decision, it is satisfied that the Respondent's actions with regard to the Domain Name have been neither bona fide, legitimate, nor fair. On the evidence produced, therefore, there could have been no basis for any rights or legitimate interests under either of subparagraphs (i) or (ii) of paragraph 4(c) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location.
The Complainant has also proved this part of the Complaint. The references to the Complainant and its 2ND SKIN mark on the Respondent's website shortly after the Domain Name was registered, confirm that the Respondent was aware of the Complainant and its mark. The Domain Name is identical to that mark, and the Respondent must have known when it registered the Domain Name that it would attract to the Respondent's website Internet users looking for the Complainant's site. The Respondent's website is a fairly typical landing page site, providing links to the websites of various businesses having no connection with the Complainant. In the absence of any Response, the Panel can only infer that the Respondent deliberately registered the Domain Name with the Complainant and its mark in mind, seeking to derive increased pay-per-click revenue from Internet users, looking for the Complainant's website, who would mistakenly arrive at the Respondent's website. The circumstances fall squarely within paragraph 4(b)(iv) of the Policy.
That finding is sufficient to deal with the Complaint. It is not necessary to refer to the Complainant's other submissions. 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.
Warwick Smith
Sole Panelist
Dated: February 9, 2010
Full & Egal Universal Law Academy