The Complainant is Galderma S.A. of Cham, Switzerland, represented by Lombard & Geliebter LLP, United States of America.
The Respondent is HSP Marketing of Orem, Utah, United States of America and Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2011. On February 9, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On February 9, 2011, GoD, Inc. 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 February 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2011.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on March 28, 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.
Regarding the language of the proceeding, the Center ascertained from the Registrar that the language of the Registration Agreement is English. Accordingly, the Panel determines that pursuant to paragraph 11(a) of the Rules the language of the proceeding is English, i.e. the language of the registration agreement. 4. Factual Background
The Complainant, which is a Swiss company, is the owner of a trademark, EPIDUO, which is registered as a word mark in International class 5 in many countries, including the United States of America (registration number 3,683,503 of September 15, 2009, filed on October 24, 2006 with priority claimed on Swiss Registration number 550759 dated October 5, 2006). The Complainant’s Epiduo product is an acne treatment. The Complainant is one of the largest dermatological company in the world, owning 31 subsidiaries worldwide. In 2009, its annual sales exceeded USD 1.3 billion. In addition, the Complainant owns applications or registrations for its EPIDUO trademark in more than fifty countries or jurisdictions around the world. The Complainant started selling, offering for sale or otherwise marketing its Epiduo product in various countries in 2008 and in the United States of America in December 2009.
The disputed domain name was registered on September 1, 2009. 5. Parties’ Contentions A. Complainant
(i) The Complainant submits that the disputed domain name is identical or confusingly similar to the EPIDUO trademark and that the use of the generic term “review” does not have any impact on the overall impression of the dominant part of the domain name.
(ii) The Complainant submits that pursuant to 15 U.S.C.A. § 1057(c), the filing of an application to register a trademark with the USPTO constitutes “constructive use” of the mark which confers, contingent on the registration, a nationwide right of priority, and that consequently its global common law rights dating back to January 2008 predate the registration of the disputed domain name by the Respondent.
(iii) The Complainant contends that since the Complainant’s international registrations and extensive use of the EPIDUO trademark predate the registration date of the disputed domain name, the burden is on the Respondent to establish rights or legitimate interests in the disputed domain name, and that the Respondent has no registered trade marks or trade names corresponding to the disputed domain name nor any rights or legitimate interests in respect of the disputed domain name.
(iv) The web site associated with offers for sale or otherwise recommends a number of competing products 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.
(v) The Respondent has no rights or legitimate interests in the disputed 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 disputed domain name or corresponding name in connection with a bona fide or non-infringing offering of goods.
(vi) By registering the disputed domain name, the Respondent is seeking to interfere with the Complainant's business as evidenced by the pay-per-click links to dermatological acne treatment products offered or sold by other companies or that compete directly with the Complainant's product, by using the Complainant's trademark to offer competing products and divert consumers and potential consumers to competing products for profit.
(vii) 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 cannot claim the noncommercial use defense. 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.
(viii) In the absence of any prior rights to EPIDUO, the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its mark in the corresponding domain name. This is confirmed by the fact that the web site associated with the disputed domain name simply redirects consumers to competing products whilst offering no meaningful review of the Complainant’s product.
(ix) When consumers or potential consumers seek information online about the Complainant’s Epiduo product or conduct an Internet search for Epiduo, they may visit the web site associated with the disputed domain name and be under the impression that the Complainant maintains a web site for its EPIDUO product at “www.” 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.
(x) The Respondent’s web site offers no rating system for web users to rate the Complainant’s Epiduo product. It is simply not a review site for the Epiduo product.
(xi) The Respondent’s web site actively directs consumers and potential consumers to products 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 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 of a product on the Respondent’s website. Such conduct amounts to bad faith.
(xii) The Complainant thus contends that the Respondent’s bad faith registration and use of the disputed domain name is established by the fact that the Respondent had received no authorization, license or permission to use it, and by the fact that the disputed domain name, by attracting Internet’s users to the Respondent’s web site, creates a likelihood of confusion with the Complainant’s EPIDUO trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site.
(xiii) The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural aspects
The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent within the time limit set by the Policy and Rules.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that the Panel shall proceed to a decision on the basis of the Complaint.
Paragraph 10(a) of the Rules gives the Panel broad discretion to conduct the proceedings and the Panel must ensure that the proceedings take place “with due expedition”.
Accordingly, in the interest of fairness and of deciding the case on the basis of the most complete available record, the Panel has undertaken some limited factual research into matters of public record insofar as it felt it needed the results of such research to reach its decision.
The Panel thus ascertained that the hyperlinks in the web site associated with the disputed domain name are currently active and lead to web pages of competitors of the Complainant, displaying products competing with the Epiduo product.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name or other remedy have been met.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by the Complainant.
In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith. 6.2. With respect to the requirements of paragraph 4(a) of the Policy A. Identical or Confusingly Similar
In comparing the EPIDUO trademark to the disputed domain name, it is evident that the latter, , consists solely of the EPIDUO trademark, followed by the generic term “review”. The addition of generic terms does not ordinarily serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor,WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672 and Allianz AG v. Marian Dinu,WIPO Case No. D2006-0318.
The Panel finds that the disputed domain name is confusingly similar to the EPIDUO trademark, which it incorporates in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that once a prima facie case is made, the burden shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing (as it has in this case). See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
As previously noted, the Respondent did not submit a Response, thus offering no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or a corresponding name or uses a corresponding name in a business. The web site associated with the disputed domain name is a web site with click-through possible selections of competing goods, and is not providing any information on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent is not (i) making a bona fide use of the disputed domain name, (ii) making a fair or legitimate noncommercial use of the disputed domain name or (iii) commonly known by the disputed domain name.
Paragraph 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 hyperlinks to competing products. Such links establish that the disputed domain name is being used for commercial gain and that it is diverting consumers, especially since there is no link to the Complainant’s product or the Complainant’s web site.
In the circumstances, on the balance of probabilities, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name such that it would have rights or legitimate interests to the disputed domain name for the purposes of the Policy. The Panel is satisfied that the Respondent is using the disputed domain name for commercial gain, and concludes that the Complainant has established the second requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by (i) failing to obtain the Complainant’s authorization even though it knew or should have known of the Complainant’s constructive common law and/or actual rights to the EPIDUO trademark; (ii) redirecting Internet traffic, intended for the Complainant, to its competitors for the Respondent’s commercial gain by using pay per click links, and (iii) disrupting the business operations of the Complainant.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name indicates opportunistic bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case. 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 disputed domain name be transferred to the Complainant.
Louis-Bernard Buchman
Sole Panelist
Dated: April 11, 2011
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