The Complainant is Galderma S.A. of Cham, Switzerland, represented by Lombard & Geliebter LLP, United States of America (“US”).
The Respondent is Terra Serve of West Bay, Grand Cayman, Overseas Territory of the United Kingdom and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2013. On March 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2013, 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.
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 March 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2013.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on April 15, 2013. 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 uses the term “rozex” in several countries to identify one of its dermatological products for the treatment of rosacea. The Complainant owns dozens of ROZEX trademark registrations in numerous countries, since at least 1989.
According to the Complainant, the disputed domain name was initially registered by the Complainant’s affiliated company on July 25, 1997. However, in 2006 the Complainant failed to renew the disputed domain name.
According to the history report of the disputed domain name annexed to the Complaint, the Respondent apparently has owned the disputed domain name since 2009.
The Panel accessed the disputed domain name on April 25, 2013, but the requested URL could not be retrieved. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) The Complainant owns numerous trademark registrations for ROZEX in at least 97 jurisdictions. The disputed domain name is identical or confusingly similar to the Complainant’s trademark ROZEX. The disputed domain name fully incorporates the Complainant’s trademark ROZEX – with no distinguishable matter;
(ii) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has never been commonly known by the disputed domain name or by the ROZEX trademark. The Respondent does not offer any products or services under the trademark ROZEX. There exists no other trademark registrations or applications for ROZEX, incorporating ROZEX or that is substantially similar to ROZEX that grants superior rights in the mark to any third party, including the Respondent. By registering the disputed domain name, the Respondent is seeking to interfere with the Complainant’s business. The Respondent derives income from the registration of disputed domain name through the placement of pay-per-click (“PPC”) pages with hyperlinks to competing products and competing companies; and
(iii) The disputed domain name was registered and is being used in bad faith. At the time when the Respondent registered the disputed domain name, it had no right or legitimate interest whatsoever in the ROZEX mark. Indeed, the disputed domain name was taken by the Respondent shortly after it had accidentally expired. The Respondent registered after the Complainant had used the same domain name to promote its ROZEX products. The registration of the disputed domain name was made in order to prevent the Complainant from reflecting its ROZEX mark in the corresponding domain name. The disputed domain names has not been used for any valid or bona fide purpose over the past 7 years. After this passage of time, the disputed domain name simply redirects consumers to competing products. The disputed domain name is being used for commercial gain, to divert consumers and to tarnish the Complainant’s ROZEX trademark. The registration of the disputed domain name by any third party – including Respondent – will potentially damage the Complainant’s reputation. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
The Panel has no doubt that “rozex” is a term directly connected with the Complainant’s activities in the dermatological business.
Annexes F, G and H to the Complaint show registrations and applications of ROZEX trademarks by the Complainant in several countries since at least 1989.
The trademark ROZEX is wholly encompassed within the disputed domain name.
It is already well established that the mere addition of a generic Top-Level Domain (gTLD) extension such as “.com” is generally irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant has shown previous uses of the disputed domain name for commercial purpose to host PPC websites with links to products that directly compete with the Complainant’s ROZEX product.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent the trademark ROZEX was already tightly connected to the Complainant’s product, which had been offered for many years online at a website incorporating the trademark.
Therefore, the Panel concludes that it would not be feasible to consider that the Respondent - at the time of the registration of the disputed domain - could not have been aware of the Complainant’s trademark and dermatological product, as well as that that the use of the expression “rozex” was a mere coincidence.
The Respondent had the opportunity to justify why it has chosen the peculiar term “rozex” to register as the disputed domain name, but it preferred to keep silent .
It is true that at least presently the disputed domain name does not resolve to any active webpage.
However, UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding) does not prevent a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Polaroid Corporation v. Jay Strommen,WIPO Case No. D2005-1005.
The passive and non-collaborative posture of the Respondent, (a) not using the disputed domain name, (b) not indicating any intention to use it, and (c) not at least providing justifications for the use of a third party trademark that is registered in several countries, certainly can not be used in benefit of the Respondent in this Panel’s opinion.
Such circumstances, associated with (d) the lack of any plausible interpretation for the adoption of the expression “rozex” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case.
Furthermore, the Respondent has proven that the disputed domain name was used to promote competing products through PPC pages. In doing so, the Respondent:
(i) created a likelihood of confusion with the Complainant’s trademark;
(ii) most likely obtained click-through revenue from this practice; and
(iii) deprived the Complainant from selling its products to prospective clients who are clearly looking for the Complainant and, at the same time, promoted products offered by the Complainant’s competitors.
In situations like this, former UDRP decisions have considered this type of use of a domain name enough to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
Accordingly, the Panel finds that the disputed domain name was registered and is used in bad faith, and the Complainant has also satisfied the third element of the Policy. 7. 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 the Complainant.
Rodrigo Azevedo
Sole Panelist
Dated: May 6, 2013
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