The Complainant is Guthy-Renker LLC of Palm Desert, California, United States of America, represented by Latham & Watkins LLP, United States of America.
The Respondent is The Web Marketing Centre, Donald Saunders of Banglamung, Chonburi, Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2010. On August 24, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On August 24, 2010, eNom 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 August 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2010.
The Center appointed John Terry as the sole panelist in this matter on September 24, 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 is a direct response television company with annual sales in excess of USD 1.5 billion. One of the products the Complainant markets, sells, and delivers to consumers is an acne treatment system under the trademark PROACTIVE. The Complainant has developed since 1988 and its annual sales now are in excess of USD 850 million for acne treatment products under the trademark PROACTIV. Numerous registrations for the trademark PROACTIV have been obtained in many countries, including United States trademark registration No. 1,890,769 dated April 25, 1995.
The disputed domain name was registered on May 13, 2008. 5. Parties’ Contentions A. Complainant
The Complaint contends the disputed domain name comprises the Complainant’s trademark in its entirety and the words “acne”, “cream”, “treatment” that describe the Complainant’s PROACTIV product, and thus is confusingly similar to the Complainant’s trademark.
As to the letter “e” included after the letters ”proactiv” in the disputed domain name, it is contended this is typosquatting, namely a “slight deviation into famous marks” which does not dispel confusion, especially since the pronunciation of “proactive” remains the same as “proactiv”.
The Respondent gained click-through revenue from its website at the disputed domain name which provided links to the websites of the Complainant and its competitors. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Rules require the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). The Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must establish these elements even if the Respondent does not submit a Response.
As there has been no Response, the Panel may also accept as true the reasonable factual allegations in the Complaint; see for example ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
The Panel finds the disputed domain name to be confusingly similar to the trademark PROACTIV in which the Complainant has established prior rights as a result of its usage and trademark registration of PROACTIV. The only difference in the disputed domain name is the addition of non-distinctive words namely “acne’, “cream”, “treatment”, and the insignificant addition of the letter ”e” at the end of “proactive” and the generic top-level domain designator “.com”.
The Panel concludes that the disputed domain name is confusingly similar to the registered mark of the Complainant and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. B. Rights or Legitimate Interests
The Panel is satisfied that the uncontroverted Complaint is made out under paragraph 4(a)(ii) of the Policy because the Respondent has not at any time had relevant rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides three non-limiting examples of circumstances under which a respondent may be able to demonstrate rights or legitimate interests under paragraph 4(a)(ii). Paragraph 4(c)(i) does not apply in this case as the Respondent has produced no evidence of use or preparations for use of the disputed domain name with a bona fide offering of goods or services as of the date of the Complaint. Paragraph 4(c)(ii) does not apply here as there is no evidence from the Respondent it had become commonly known by the disputed domain name. Paragraph 4(c)(iii) does not apply either because the Respondent has not demonstrated any legitimate noncommercial or fair use of the disputed domain name.
Thus the Respondent failed to establish circumstances within any of the examples in paragraph 4(c) of the Policy and also failed generally to rebut the Complainant’s prima facie case as to evidence applicable to paragraph 4(a)(ii).
Maintaining a website at a domain name incorporating a complainant’s mark that contains links to websites of the complainant’s competitors is not legitimate use or showing a bona fide offering of goods; see for example Southern Exposure v. Southern Exposure, Inc., NAF Claim No. FA0005000094864 (July 18, 2000). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth circumstances, which if present, shall be held to be registration and use in bad faith. Paragraph 4(b)(iv) is relevant to this case.
The Panel finds it inconceivable that the Respondent was unaware of the Complainant’s widely-known trademark PROACTIV when it registered the disputed domain name. Such registration and any use without rights or legitimate interests is evidence of bad faith registration and use; see for example DaimlerChrysler Corporation v. Web4Comm SRL Romania,WIPO Case No. DRO2006-0003.
In Compagnie Générale des Etablissements Michelin CGEM – Michelin & Cie, Michelin Recherche et Technique S.A. v. Horoshiy Inc., WIPO Case No. D2004-0752, the panel stated: “the disputed domain names are used for ‘click-through’ revenue generating sites which provide income to the Respondent by inducing Internet users to click through to sponsored links. It is the Panel’s opinion that the purpose of the Respondent’s use of domain names containing the Complainants’ famous trademarks is merely to capture the Complainants’ customers who are seeking the Complainants’ products and/or services, and to re-direct them to other websites. Such use of domains is neither legitimate, nor of good faith. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration under the Policy, Paragraph 4(b)(iv).”
In Movado LLC v. Titan Net,WIPO Case No. D2006-0824, the panel stated: “The Panel accepts that it is highly likely that the Respondent is deriving click-through revenue from the website. This brings the deception within paragraph 4(b)(iv) of the Policy and constitutes evidence of both bad faith registration and bad faith use”.
In the present case, in the Panel’s view, taking into consideration the evidence on the current record, it seems that the Respondent gained click-through revenue from its website at the disputed domain name, but in any event its inclusion of a widely-known trademark as the characterizing part of the domain name is also evidence of bad faith registration and use.
Based on the evidence and unrefuted contentions of the Complainant, the Panel finds the third element of the Policy established by the Complaint. 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.
John Terry
Sole Panelist
Dated: October 4, 2010
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