WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Guthy-Renker LLC v. Andrew Scherer Case No. D2010-0977 1. The Parties
The Complainant is Guthy-Renker LLC of California, United States of America, represented by Latham & Watkins LLP, United States of America.
The Respondent is Andrew Scherer of Connecticut, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2010. On June 15, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On June 17, 2010, the Registrar 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 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 June 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 13, 2010.
The Center appointed Michelle Brownlee as the sole panelist in this matter on July 19, 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. 4. Factual Background
The Complainant owns United States Trademark Registration Nos. 1,890,769 and 2,574,142 for the mark PROACTIV for acne treatment preparations and make-up, foundation make-up, skin concealer, face powder and sunscreen preparations. These registrations issued in 1995 and 2002 respectively, and allege first use in commerce as early as 1991. The Complainant owns numerous registrations in various countries around the world for the PROACTIV trademark. The Domain Name was registered on May 20, 2007. 5. Parties' Contentions A. Complainant
The Complainant is one of the world's largest direct response television companies, with annual sales exceeding USD1.5 billion. One of the most successful products Guthy-Renker markets, sells, and delivers to consumers is its PROACTIV Solution acne treatment system. Introduced in the early 1990s, PROACTIV now has over five million customers, and annual worldwide sales of over USD850 million, with 70% of those sales in the United States.
PROACTIV acne treatment products are sold primarily through television infomercial advertising, at in-store kiosks and over the Internet. Guthy-Renker aggressively markets its PROACTIV products through television commercials and infomercials and national print ads, using celebrity spokespersons like Jessica Simpson, Britney Spears, Katy Perry, Julianne Hough, Alyssa Milano, Vanessa Williams, Alicia Keys, Sean Diddy Combs, Jennifer Love Hewitt, Serena Williams and Miss America 2006 Jennifer Berry.
The Complainant owns registrations for the PROACTIV trademark in the United States and more than forty other countries, and has also registered numerous domain names that incorporate the PROACTIV mark, including: , , , , , , , and .
The Complainant contends that the Domain Name is confusingly similar to its PROACTIV mark, that the Respondent does not have any rights or legitimate interests in the Domain Name, and that the Respondent has registered and is using the Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii.) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii.) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has amply demonstrated that it owns trademark rights in the PROACTIV trademark. The second level of the Domain Name consists of the Complainant's PROACTIV trademark plus the word “blog.” The addition of a generic term such as “blog” generally does not serve to eliminate confusing similarity since the dominant part of the domain name is the trademark. Numerous UDRP panel decisions have held that the addition of the generic term “blog” did not eliminate the similarity between the complainants' marks and the domain names. See
L'oréal Sa And Lancôme Parfums Et Beaute Et Compagnie v. Myfashionfiesta.Com Llc, Will Turnage, ,WIPO Case No. D2009-0729; Compagnie Gervais Danone v. Edward Brooks,WIPO Case No. D2009-0330; Accor and SoLuxury HMC v. Domains by Proxy, Inc. and Therese Kerr,WIPO Case No. D2009-0243; Pepperdine University v. The CJ Group, LLC,WIPO Case No. D2007-1389.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant's PROACTIV trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights or a legitimate interest in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue
The Respondent has not presented evidence that he used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services, that he is commonly known by the Domain Name or that he is making a noncommercial or fair use of the Domain Name. The only evidence of use of the Domain Name in the present record is a screen shot of the web site that is posted using the Domain Name, which shows that the Respondent is using the site to generate click-through advertising revenue, including ads for products that are competitive with the Complainant's products. This activity is clearly not a bona fide offering of goods or services. See, e.g., PRL USA Holdings, Inc. v. LucasCobb,WIPO Case No. D2006-0162. Thus, the Panel finds that Respondent does not have any rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Respondent's use of the Domain Name to earn referral fees by linking to other web sites attracts Internet users to Respondent's site by creating confusion as to source and results in commercial gain to Respondent. Accordingly, the Panel finds that the Domain Name was registered and used in bad faith. 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.
Michelle Brownlee
Sole Panelist
Dated: July 27, 2010
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