The Complainant is Galderma S.A., Cham, Switzerland, represented by Lombard & Geliebter LLP, United States of America.
The Respondent is Domains by Proxy, Inc., Arizona, United States of America and Aegis Holdings Group, Inc., Utah, United States of America, (the “United States”). 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 January 26, 2011. On January 27, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On January 27, 2011, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 3, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 8, 2011. The Center verified that the amended 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 February 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2011. Although the Respondent did not file a formal Response under the Policy, a representative of the Respondent sent an email to the Center with comments on the Complaint on February 8, 2011.
The Center appointed Ian Lowe as the sole panelist in this matter on March 11, 2011. 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 multi-national researcher, developer, manufacturer, wholesaler and retailer of pharmaceutical (prescription and non-prescription) dermatological products. It is the second largest dermatological company in the world, owning 31 subsidiaries worldwide. In 2009, its annual sales exceeded 1.3 billion U.S. dollars.
The Complainant is the registered proprietor of a US trademark EPIDUO filed on October 24, 2006 and registered on September 15, 2009 in Class 5 in respect of pharmaceutical products, namely, dermatological anti-acne preparations. It owns applications and registrations in respect of the EPIDUO trademark in around 57 countries or jurisdictions around the world.
The Domain Name was registered on September 1, 2009. At the date of the Complaint the Domain Name resolved to a website providing a weblog on acne and its treatment. The home page comprised a description of and comments on the Complainant's Epiduo product. The blog pages referred to a number of products of competitors of the Complainant. 5. Parties’ Contentions A. Complainant
A summary of the contentions on the part of the Complainant is as follows:
1) The Complainant is the registered proprietor of United States trademark number 3683503 EPIDUO filed on October 24, 2006 and registered on September 15, 2009 in Class 5 in respect of pharmaceutical products, namely, dermatological anti-acne preparations. It also owns applications and registrations in respect of the EPIDUO trademark in around 57 countries or jurisdictions around the world. It launched its EPIDUO product in the United States at least as early as December 31, 2008.
2) The Domain Name is identical or confusingly similar to the Complainant’s mark EPIDUO in which the Complainant has prior rights. It comprises the entirety of the Complainant’s mark together only with the word “review”. Insofar as the term “review” is not distinctive, it does not serve to distinguish the Respondent’s domain name from the Complainant’s trademark.
3) The website at “www.” displays, offers for sale or otherwise recommends a number of products such as VitaB5, Proactiv, 7 Day Acne Detox, Lipovox, Acnexus and others but not the Complainant's Epiduo product. The Complainant states on information and belief that the Respondent receives a payment or referral fee each time a user clicks on any one of the links for the competing products and is therefore making commercial use of the site from use of the Complainant's EPIDUO mark since it reaps some financial benefit from the placement of such links.
4) The Respondent has no rights or legitimate interests in the Domain Name. The Respondent has never been commonly known by the name EPIDUO and it has not used, or made any demonstrable preparations to use, the Domain Name or corresponding name in connection with a bona fide or non-infringing offering of goods. A cursory trademark search at the time the Domain Name was registered would have revealed the existence of the Complainant’s rights in the name EPIDUO in one of the 57 jurisdictions where the mark is registered or applied for.
5) By registering the Domain Name, the Respondent is seeking to interfere with the Complainant's business as evidenced by the pay-per-click links to pharmaceutical products offered or sold by other companies or that compete directly with the Complainant's product. As of December 3, 2010, the web site carried links to 12 other web sites offering products that compete with the Complainant's EPIDUO acne treatment product. The Domain Name is misleading because those websites do not offer any review of EPIDUO. There is no indication at all on the Respondent's website that it has used the Complainant's product.
6) By offering links to competing products, the Respondent is seeking to interfere with the Complainant's business by using the Complainant's trademark to offer competing products and divert consumers and potential consumers to competing products for profit.
7) While so-called “gripe” or review sites are entitled to avail themselves of the fair use defense, when the griper or reviewer goes beyond merely airing complaints or comments and offers some goods or services, such as selling advertising space or offering links to competitors of the target, such activities satisfy the requirement of use of the target’s trademark in a commercial setting. Such web sites rely on confusion caused by the domain name to convey their message, thereby negating any free speech defense. Here the Respondent attracts users to its site by promising a “review” of the Complainant’s EPIDUO product but its intent is clear: to profit from redirecting web users to competing products.
8) In the absence of any prior rights to EPIDUO, the Respondent registered the Domain Name in order to prevent the Complainant from reflecting its mark in the corresponding domain name. This is confirmed by the fact that over one year after the date of registration of the Domain Name the site simply redirects consumers to competing products whilst offering no meaningful review of the Complainant’s product.
9) In cases such as Easyjet Airline Company Ltd v. Steggles WIPO Case No. D2000-0024, panels have found bad faith when the respondent registered domain names using a competitor’s trademark soon after learning of the competitor’s confidential business strategy. In this case the Domain Name was registered nine months after the Complainant launched its EPIDUO product and just two weeks before the certificate of registration of US trademark 3683503 was issued. Here, in view of the Complainant’s rights in the distinctive EPIDUO mark, an Internet user entering is more likely than not expecting to arrive at a web site hosted by the Complainant, the holder of numerous registered trademarks and service marks for EPIDUO or, at the very least, an unbiased and actual review of the EPIDUO product. The disputed web site does neither.
10) When consumers or potential consumers seek information online about the Complainant’s EPIDUO products they will either enter EPIDUO.COM or conduct an Internet search for “EPIDUO”. Those results will create the impression that Complainant maintains a web site for its EPIDUO product at EPIDUOREVIEW.NET or owns the web site but has not offered any means to purchase its own products. This is damaging to the reputation of the Complainant’s mark and to the Complainant’s general business reputation.
11) The Respondent’s web site offers no bulletin board or discussion forum for web users to offer their own reviews or commentary and offers no rating system for web users to rate the Complainant’s EPIDUO product. It is simply not a review site.
12) The Respondent’s web site actively directs consumers and potential consumers to products or services that compete directly with Complainant’s EPIDUO product, and the Respondent is paid when users click the sponsored links or accepts a flat fee to maintain such links. The Respondent therefore intends to attract, for commercial gain, Internet users to its web site 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 web site or location or of a product or service on the Respondent’s website or location. Such conduct amounts to bad faith.
13) Section 4(a)(iii) of the Policy permits “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. The Respondent, however, includes links to competing products. Such links establish that the Domain Name is being used for commercial gain and that it is diverting consumers, especially since there is no link to Complainant’s product or Complainant’s web site. The Respondent cannot claim fair use protection simply by inserting the word “review” in the Domain Name. This is particularly true when inclusion of the word “review” is both inaccurate and misleading.
14) When writing about EPIDUO on the web site, the Respondent suggests that “side effects like dryness, irritation and redness are common amongst products like Epiduo” and that “it can cause numerous side effects”. It suggests instead using “some of our top picks” and taking a look at “the natural ingredients included in some over the counter acne treatments listed above”. The Respondent offers no citation, evidence or basis for its claims. There is no assertion that the Respondent has tried EPIDUO and it offers no evidence that the non-Epiduo products do not cause side-effects. The products are therefore compared unfairly and such unfounded assertions amount to bad faith.
15) The fact that the Respondent uses the Complainant's trademark in any way for a web site that sells competing products is bad faith even if the site contains some kind of valid review component. B. Respondent
In an email to the Complainant copied to the Center on February 8, 2011, the Respondent's representative stated:
"To be clear, this site, [sic] has no outbound links, no paid advertisements, receives no commissions and has no ownership in any of the products reviewed, including but not limited to VitaB5, Acnexus, Acnezine etc. I offer no goods or services for sale including advertising space and offer no links to any products. There are no redirection to competing products and as such I have not shown any intent to profit from your clients trademark."
The Respondent did not file any other Response to the Complaint and this email has therefore been treated as the Response to the Complaint. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(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 interest in respect of the Domain Name; and
(iii) the Domain Name has been registered in bad faith and is being used in bad faith. A. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s registered trademark EPIDUO together only with the generic word “review”. The “.net” domain suffix may be ignored for the purpose of determining identity or confusing similarity with the Complainant’s mark. The addition of the generic word does not detract from the distinctiveness of the “epiduo” term.
The Panel accordingly finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent has made only a very limited response to the Complaint and there is no suggestion that it claims any rights to the EPIDUO name. Paragraph 4(c)(iii) of the Policy provides, however, that if a 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 or service mark at issue" then that shall demonstrate rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii) of the Policy.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions reflects at paragraph 2.4 the views of panelists as to whether a domain name that is confusingly similar to a trademark may be used for a genuine noncommercial free speech web site. The Complainant argues, however, that the site is not being used for genuine, noncommercial criticism. The Complainant takes issue with the nature of the criticism of the Complainant's product at the Respondent's web site claiming that the criticisms made of its products are not fair or justified or supported by real evidence. Furthermore, the Complainant protests that the Respondent does not state whether it has actually used EPIDUO and does not comment on whether the alternative or competing products mentioned are themselves likely to cause the same side effects as EPIDUO.
The Panel does not accept these criticisms. The web pages exhibited by the Complainant comprise what it says is a complete copy of the Respondent's web site. The pages comprise the home page that is headed Epiduo Review and then goes on to describe EPIDUO and its constituents and to assert various side-effects that users are likely to suffer. The other pages comprise blogs that include commentary on acne and its causes as well as further criticism of EPIDUO and commentary on other products or substances that may be used to treat acne. Although the Complainant may not agree with the criticism, the Panel does not consider that there is anything to suggest that the content is other than genuine criticism or review. Although the Complainant states that the site does not offer any bulletin board or discussion forum for web users to offer their own reviews or commentary, the exhibited web pages appear to offer the facility for readers to submit their comments on the reviews and discussion.
The WIPO overview deals in particular with the divergence of opinion as to whether a domain name that is not identical to a trademark but includes some modifier may be used for a domain name in these circumstances. As the panelist in Covance, Inc v. The Covance Campaign,WIPO Case No. D2004-0206 noted, in cases where the domain name comprises a trademark without any modifier, the degree of initial interest confusion on the part of an Internet user may well be such that it would not be legitimate for the domain name to be used for a criticism site. However, where, as in this case, the word "review" is added to the trademark then the degree of initial interest confusion is likely to be rather less.
In this case, the Panel considers that a user would not be surprised on visiting the Respondent's web site to find, as is obviously the case judging from the home page, that the web site has no direct association with the Complainant. The Panel does not accept that a user, having made a search for "epiduo" and been presented with a link to the Respondent's web site in the search results, would immediately assume that it was an official web site of the Complainant.
In the Panel's view, the Respondent is making legitimate or fair use of the Domain Name.
The question remains, however, whether the Respondent's is in fact using the Domain Name for commercial gain. The Complainant claims that the web site carries links to 12 other web sites offering products of competitors of the Complainant and states on information and belief that the Respondent is paid when users click on the links or that it accepts a flat fee to maintain such links. There is, however, no evidence in the Complaint or its annexures that this is the case. It does appear from the copy web pages exhibited that there are some product names that are underlined on some of the blog pages which could suggest that there were underlying hyperlinks to other websites.
The Complaint makes the bare assertion that "Respondent receives a payment or referral fee each time a user clicks on any one of the links for…" the competing products. It does not however provide any details of those underlying links (that would presumably have been readily available from the source code for the web pages) or of the URLs generated when the links were clicked or any details of the web sites that appeared. There is no evidence, for example, that in moving from the links on the Respondent's web site to the web sites of the Complainant's competitors (as alleged by the Complainant) a reference to a pay-per-click affiliate was picked up which could result in the Respondent deriving income.
In contrast, the very short Response denies that the web site carried any outbound links or paid advertisements, and denies that the Respondent has received any commissions. It states that the Respondent did not offer links to any products, there was no redirection to competing products and the Respondent has not shown any intent to profit from the Complainant's trademark.
In the circumstances, on the balance of probabilities, the Panel is not satisfied that the Respondent is using the Domain Name for commercial gain. The Panel finds on balance that, on the material available in these proceedings, the Respondent is making a legitimate noncommercial or fair use of the Domain Name such that it does have rights or legitimate interests to the Domain Name for the purposes of the Policy. C. Registered and Used in Bad Faith
As noted above, the Complainant is required to establish that all three elements are present for the purposes of paragraph 4(a) of the Policy. Since the Complainant has failed to establish the second element, the Panel is not required to consider whether the Respondent registered and used the Domain Name in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Ian Lowe
Sole Panelist
Dated: March 27, 2011
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