Complainant is MSD Consumer Care, Inc. of Memphis, Tennessee, United States of America, represented by Lowenstein Sandler PC, United States.
Respondent is HostGator, Brent Oxley of Houston, Texas, United States. 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 June 13, 2012. On June 13, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On June 14, 2012, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 Respondent of the Complaint, and the proceedings commenced on June 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 9, 2012.
The Center appointed M. Scott Donahey as the sole panelist in this matter on July 12, 2012. 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.
On August 5, 2012, the Panel issued Procedural Order No. 1, which provided that:
“After reviewing the administrative case file in this proceeding, the Panel notes that a number of the Complainant’s registrations appear to be owned by a third party (Schering-Plough Health Care Products, Inc) and/or to have been assigned to some other unidentified party.
The Panel therefore requests the Complainant to show evidence that it is either the registered owner of some or all of these registrations, or at least a relevant assignee, or to provide appropriate supporting to show evidence that it has obtained the consent of the relevant registered trademark owner to the commencement of the present proceedings by the Complainant and to the remedy sought therein.
The Panel also requests the Complainant to provide further information or evidence on the Complainant’s sworn claim of investment of approx USD 40 million in marketing the COPPERTONE mark over 2010/2011 (at least to the extent that such claim would be intended to represent an assertion of Complainant unregistered or common law trademarks rights in the COPPERTONE mark).
The Complainant’s supplemental statements, limited to the matters indicated above, should be submitted to the Center, with a copy provided to the other Party, no later than Friday, August 10, 2012.
The Respondent should it choose to do so may respond to the Complainant’s supplemental submissions no later than Wednesday, August 15, 2012.
The Decision Due Date is hereby extended to September 1, 2012.”
On August 7, 2012, Complainant requested an extension of time to and including August 22, 2012, in which to file its response to Procedural Order No. 1. On August 10, 2012, the Panel issued Procedural Order No. 2 which provided that:
“The Panel hereby issues the following clarifications pursuant to the questions raised by the Complainant counsel by email of August 7, 2012:
The Panel is seeking from the Complainant any information or supporting evidence of the actual marketing efforts (for, example, dated brochures or advertisements showing use and circulation of the mark by the Complainant during the relevant period), to the extent that such evidence would support the existence of possible unregistered trademarks rights by the Complainant as evidenced through use. A sworn statement to the effect that money has been expended on marketing does raise a question of possible unregistered trademark rights, but does not, of itself, serve to establish that the Complainant per se has established unregistered trademark rights in COPPERTONE for purposes of the Policy. If the Complainant is not, in fact, seeking to rely on any claim of unregistered trademark rights in COPPERTONE in the present proceeding, then this particular aspect of the Panel’s request may be disregarded.
The Panel also takes the occasion to note the standing requirement under the Policy on a Complainant to show rights (whether through direct ownership, license or consent to use) in any relied upon trademark(s), whether registered or unregistered, and where such rights would not be established to the Panel’s satisfaction, particularly following a Panel request for further information to aid its consideration of that question, a Complaint must necessarily fail.
The requested extension until August 22, 2012 is hereby granted, with a corresponding extension in the due date for the Respondent’s submission (if it wishes to file it) to August 27 and for the Panel’s decision to September 11, 2012.”
Complainant provided submissions in response to the Procedural Orders on August 14, 2012.
Respondent failed to file any submission by August 27, 2012, or at any time thereafter. 4. Factual Background
Complainant is the successor corporation by virtue of a name change to the registrant of the relevant trademarks shown in the records of the United States Patent and Trademark Office (USPTO) as “Schering Plough HealthCare Products, Inc”. Complaint, Supplemental Annex A. The name change is in the process of being recorded with all applicable trademark offices, and has been changed with the USPTO. Complaint, Supplemental Annex B. Complainant is the registrant of the mark COPPERTONE and the related family of marks all of which include the mark COPPERTONE. Id. Complainant has used the COPPERTONE mark since at least 1945 in conjunction with sun care products and related products. Complaint, Annex 3. In 2010 and 2011 alone, Complainant spent over USD 40 million in the advertisement and promotion of the COPPERTONE family of marks. Among its worldwide registrations of the COPPERTONE family of marks, Complainant has at least two registrations in Mexico. Complaint, Annex 5. Complainant also owns numerous domain names incorporating the COPPERTONE mark, including in the ccTLD corresponding to Mexico. Complaint, Annex 6.
The disputed domain name was registered on December 10, 2010. Complaint, Annex 1. Respondent has used the disputed domain name to resolve to a Spanish language web site that mimics the look and feel of Complainant’s main web site. Complaint, Annex 7. Respondent has not been authorized by Complainant to use its trademarks, logos, or other intellectual property in any way, nor has Respondent been authorized, licensed, or otherwise sanctioned by Complainant to sell its Complainant’s products, either on-line or otherwise. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant’s COPPERTONE mark, that Respondent has never been authorized to use Complainant’s marks or to engage in sales of Complainant’s product and that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) that the respondent has no legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name, consisting of Complainant’s distinctive COPPERTONE mark and the geographic or geopolitical indicator “mexico,” is confusingly similar to Complainant’s trademark. Wal-Mart Stores, Inc. v. Walmarket Canada,WIPO Case No. D2000-0150. B. Rights or Legitimate Interests
The consensus view of UDRP panelists concerning the burden of establishing that a respondent no rights or legitimate interests in respect of the disputed domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), paragraph 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
In the present case the disputed domain name was registered in 2010. It has been found that the disputed domain name consists of Complainant’s well known trademark, which has been used since 1945 and which has been registered around the world, including in Mexico. Respondent has been using the disputed domain name to resolve to a Spanish language web site that mimics Complainant’s web site and which derives income from the sale of either Complainant’s goods or counterfeit goods. This is a clear example of bad faith registration and use as set out in paragraph 4(b)(iv) of the Policy. 6. Decision
For 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 Complainant.
M. Scott Donahey
Sole Panelist
Dated: September 10, 2012
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