1.1 The Complainant is Allergan Inc. of Irvine, California, United States of America, represented by Melbourne IT Digital Brand Services, Australia.
1.2 The Respondent is The Lifeworks Group Pty Ltd of Carine, Western Australia, Australia, internally represented. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2011. On April 13, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 13, 2011, 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.
3.2 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”).
3.3 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 April 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2011. The Response was filed with the Center on April 30, 2011.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 18, 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
4.1 The Complainant is a specialty health care company based in the United States, but with offices worldwide. The “Botox” product that the Complainant deals in is well-known. It is a cosmetic prescription medicine that is injected into muscles and used to improve the look of moderate to severe frown lines. The product is currently approved in approximately 80 countries and millions of patients have been treated with the product over the course of nearly 20 years.
4.2 The Complainant is the owner of various registered trade mark worldwide that comprise or incorporate the term “Botox” (the “BOTOX marks”). They include:
(i) United States registered trade mark No 1,692,384 for the word BOTOX in class 5 filed on June 9, 1992; and
(ii) Australian registered trade mark No. 551279 for the word BOTOX in class 5 filed on February 28, 1991.
4.3 According to the publically available WhoIs data for the Domain Name, the Domain Name was registered on May 28, 2009. It is registered in the name of the Respondent, who appears to be an Australian company under the control of one C. Sutherland.
4.4 Prior to the Complaint the Domain Name resolved to a web page with a relatively unsophisticated format that purported to promote an “AMAZING new anti-aging product”. The page also contained the text “Botox is Now Completely Unnecessary”. Further, when the Internet user clicked on the “shop” link on that page, that user was taken to another website that promoted “ageLOC” and other anti-aging products.
4.5 On January 31, 2011, the Complainant’s representative sent a letter to the Respondent. In that letter it, inter alia, sought the transfer of the Domain Name to the Complainant, failing which proceedings would be commenced under the Policy. It also offered to “reimburse any out of pocket expenses [the Respondent] may incur from the registrar relating to the transfer of the [Domain Name] to [the Complainant] and any registration fee you may have paid for the [Domain Name]”.
4.6 In the brief email correspondence that followed, Ms. Sutherland sent an email to the Complainant’s representative on February 28, 2011, in which she stated as follows:
“While I strenuously deny all alleged grounds listed in your brief, I note that your client has an interest in purchasing the domain ‘SayNo2B’. Given that creation of a new site and development of traffic to that would obviously be time consuming and costly, at this stage I would be willing to accept $AU25,000 as a goodwill gesture to help defray my costs. Is this acceptable to your client?”
4.7 As at the date of this decision the format of the website operating from the Domain Name, changed slightly. The “shop” link had been removed. There is a reference to “alternatives to Botox” but no specific competing products appear to be advertised. 5. Parties’ Contentions A. Complainant
5.1 The Complainant refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which is said to state that “the leading opinion with regard to domain names that consist of [the] addition of a pejorative term to a well-known mark is that such domain names are found to be confusingly similar to the trade [] mark”.
5.2 The Complainant contends that the use of the Domain Name made by the Respondent is not a bona fide offering of goods or services. It claims that the Respondent has been using the Domain Name to divert customers to its website and the Domain Name is “primarily a pretext for commercial advantage in the anti-aging products industry”. For these reasons, it maintains that the Respondent has no rights or legitimate interests in respect of the Domain Name.
5.3 The Complainant further asserts that the Respondent was aware of the Complainant’s marks at the time that the Domain Name was registered. On the issue of bad faith use, it refers to its letter before action and alleges that the Respondent has sought to gain commercial advantage by selling products that compete with the Complainant. It also refers to the offer to sell the Domain Name to the Complainant for AUD 25,000, which is said to be “in vast excess of the Respondent’s out-of-pocket costs directly rated to the Domain Name”. B. Respondent
5.4 The Respondent denies that the Domain Name is identical or confusingly similar to a mark in which the Complainant has rights. It contends that the Domain Name is “clearly and unequivocally a criticism/protest site”.
5.5 On the question of rights or legitimate interests, it is simplest to repeat the Respondent’s contentions in full.
“The respondent claims a right and legitimate interest in respect of the domain name.
The respondent is against the use of the trademarked product in the case of cosmetic applications, and also believes that not enough is being done to warn consumers of the risks of non-cosmetic applications. The respondent has a right to protest against the trademarked product.
- upon receipt of the notice of dispute the Respondent became aware that the Complainant objected to the Respondent’s promotion of alternatives to the trademarked product. Therefore the Respondent has removed links to her own alternatives and instead linked to a wide range of other alternatives to the trademarked product, by a range of independent authors, none of which are associated in any way with the Respondent.
- the Respondent desires to be known as a person opposed to the use of the trademarked product for cosmetic purposes.
- The Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark at issue. The Respondent merely wishes to draw greater attention to the risks of use of the trademarked product, and to the fact that there is a range of safer, less painful and less expensive alternatives.”
5.6 On the question of bad faith registration and use the Respondent asserts that “[a] protest site or criticism site should not be considered as registered and used in bad faith”. So far as its offer to sell the Domain Name is concerned, the Respondent denies that it approached the Complainant to sell the Domain Name. Instead, it contends that the Complainant offered to pay its costs and “and the Respondent put forward a figure for consideration which was fair given the size and scope of the site and the work completed on it”. However, no further explanation or evidence is provided as to the Complainant’s costs, the work undertaken or why the figure of AUD 25,000 is “fair”.
5.7 The Respondent also denies that it has registered and used the Domain Name for commercial gain. It contends instead that it “merely wishes to draw greater attention to the risks of use of the trade [] marked product, and to the fact that there are a range of safer, less painful and less expensive alternatives”. 6. Discussion and Findings
6.1 The Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). A. Identical or Confusingly Similar
6.2 The Complainant refers to the WIPO Overview 2.0. This records as a consensus view amongst UDRP panelists that a domain name that comprises a well-known trade mark with a pejorative term will normally be considered “confusingly similar” to that mark for the purpose of paragraph 4(a)(i) of the Policy. This is so notwithstanding the fact that (as the Respondent contends) in such a case it is unlikely that a person presented with the domain name alone would be confused into believing that the domain name is endorsed or controlled by the complainant. The reasons for this were addressed at length by the Panel in Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227. It is convenient to repeat the relevant passage from that decision in full:
“6.6 It is necessary to recognise that the term of confusing similarity is a low threshold test the purpose of which is effectively to assess whether a complainant has sufficient rights so as to give it standing to bring a complaint (see, for example, Aubert International SAS and Aubert France SA v. T Co.,WIPO Case No. D2008-1986). It involves a simple comparison of the mark relied upon with the domain name in issue. The geographical location of that mark is not important and normally neither is the degree of fame or reputation that a registered mark has achieved. Similarly, reference to local case law on confusing similarity or likelihood of confusion, is also unlikely to be that helpful.
6.7 It is against this “standing” requirement that the word ‘confusing’ is to be understood. So for example, even in cases where the domain name in issue takes the form of a trade mark combined with the pejorative term such as ‘sucks’, there is still likely to be confusing similarity (see for example, Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647). There are cases where a domain name combining the term ‘sucks’ with a mark has not been held to be confusingly similar to that mark where the domain name has been used for a criticism site (see the case[s] listed in The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez,WIPO Case No. D2003-0166), but the Panel would suggest that the real rationale of those cases may rather be found in an assessment of whether the operation of a criticism site from such a domain name provides rights or legitimate interests and/or is in bad faith.
6.8 This low threshold approach in cases where the pejorative or the alleged distinguishing term is incorporated in a Domain Name is sometimes said to be justified by the fact that the domain name might be seen by persons who are not familiar with the language from which the additional word is taken. It is claimed that such persons will be confused by the mark element of the domain name and that this confusion will not be dispelled by the additional word or words in the domain name. There may be some force in this argument, but regardless of its exact justification, the advantages of the low threshold approach are clear. Take for example, a company that registers the domain name for a website that does nothing more than sell its own goods. In the opinion of this Panel the question of whether or not such use should be allowed is best addressed in the context of an assessment of rights or legitimate interests and bad faith. To interpret paragraph 4(a)(i) as setting a low threshold test permits this to happen.”
6.3 For these reasons the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests and Registered and Used in Bad Faith
6.4 It is clear to the Panel that the Domain Name was registered by the Respondent with the Complainant’s mark in mind and in order to refer in a disparaging way to the Complainant’s mark and products. There is also no suggestion that the Respondent has any trade mark rights in the term “Botox”.
6.5 In such a case it is possible to consider the issues of rights or legitimate interests and bad faith together. Indeed, in the present circumstances, whether there is a legitimate interest and whether there is registration and use in bad faith, essentially involves answering the same question; i.e., whether the Respondent by means of the registration intended to take and is taking unfair advantage of the Complainant’s trade mark rights.
6.6 It is possible legitimately to register and use a domain name that intentionally incorporates the mark of another if (a) the domain name clearly signals to Internet users, for example by the inclusion of a pejorative term such as “sucks”, that the owner of the domain name is likely to be critical of the mark holder and (b) it is clear that the domain name either has been or will be used for the purpose of a criticism site.
6.7 That such a criticism site can provide a legitimate interest is reasonably clear from the wording of paragraph 4(c)(iii) of the Policy. This provides that a legitimate interest for the purposes of the Policy can be demonstrated by “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”. And if a domain name has been registered and is being used for the purpose of such a “legitimate noncommercial or fair use”, then it is difficult to see how that registration or use might be categorised as registration or use in bad faith.
6.8 However, for such critical use to be legitimate, the prevailing view amongst panelists appears to be that the use must be at least predominantly noncommercial. The position is succinctly summarised in paragraph 2.4 of the WIPO Overview 2.0, which records that “[t]here are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose, but the panel finds that it is primarily a pretext for commercial advantage”. In such a case a legitimate interest does not exist, and the registration and use is also likely to be in bad faith.
6.9 In the opinion of this Panel and as the words “primarily a pretext for commercial advantage” suggest, it does not follow that any commercial use no matter how fleeting and small will necessarily prevent a finding of a legitimate interest. For example, in 1066 Housing Association Ltd. v. Mr. D. Morgan,WIPO Case No. D2007-1461, this Panel was prepared to disregard a number of small advertisements that appeared to be merely incidental to what clearly has always been the predominate and obvious critical purpose of the website1.
6.10 With this in mind the Panel turns to the facts of the present case. The Panel accepts that the Respondent is critical of the Complainant’s products. Nevertheless, it is unconvinced that the website operating from the Domain Name was ever a criticism website of a sort that would provide a right or legitimate interest under the Policy.
6.11 Prior to the commencement of these proceedings there was no real critique of the Complainant’s products on the website operated by the Respondent. There was merely the assertion that “Botox is now completely unnecessary” and then a reference (albeit somewhat cryptically) to a competing “new anti-aging product”. There were also links to another website that sold competing products to the Complainant.
6.12 In the circumstances, it appears reasonably clear to the Panel that the primary purpose of the website was to sell or promote products competing with the Complainant. The Panel, therefore, concludes notwithstanding the Respondent’s protestations to the contrary that the Respondent sought to take advantage of the reputation of the Complainant’s mark to draw Internet users to its website for commercial advantage by means of those competing sales. In the opinion of the Panel this is sufficient to enable the Panel to make a finding of no rights or legitimate interests and registration and use in bad faith. It does not matter for these purposes that Internet users may not be confused. The unfairness in such a case lies in the fact that the Complainant’s mark is being used to promote competing products (for a similar analysis, albeit in the context of a commercial website selling a mixture of products some of which legitimately bore the trade mark incorporated in the relevant domain name, see Research in Motion, supra).
6.13 Even in the absence of any confusion on the part of Internet users this is likely to be sufficient by itself to enable the Panel to make a finding of no rights or legitimate interests and registration and use in bad faith. However, there is another factor in this case that also throws light on the Respondent’s motivations and supports the Panel’s conclusions in this respect. That is the offer of sale of the Domain Name for AUD 25,000.
6.14 First, the Panel does not accept the Respondent’s claim that it did not initially approach the Complainant to sell the Domain Name. It is not a fair characterisation of the letter of the Complainant dated January 31, 2011 that it was offering to purchase the Domain Name. The Complainant merely offered to pay the Respondent its out-of-pocket costs associated with the registration and transfer of the Domain Name. The offer made in response by the Respondent was of a very different character.
6.15 Second, the Respondent’s contention that the figure of AUD 25,000 involved a fair reflection of size and scope of the work undertaken by the Respondent appears inherently improbable. It is a mere assertion by the Respondent unsupported by any evidence.
6.16 In the circumstances, it seems more likely than not that the Respondent by means of its offer sought to take opportunistic commercial advantage of the fact that the Complainant was seeking the transfer of the Domain Name. These do not strike the Panel as the probable actions of a registrant whose pre-dominate purpose when registering the Domain Name was to set up a criticism site in relation to the Respondent’s products.
6.17 The Panel therefore concludes that the Complainant has made out the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. 7. Decision
7.1 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.
Matthew S. Harris
Sole Panelist
Dated: May 23, 2011
1 The complainant still succeeded in that case, but that was because the domain name in question contained the relevant trade mark without a pejorative element.
Full & Egal Universal Law Academy