Complainant is Obagi Medical Products, Inc. of Irvine, California, United States of America (“United States”) represented by Wood, Herron & Evans, LLP, United States.
Respondent is R Dizon of Gardena, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2017. The Center notified Complainant on May 4, 2017, that the expiry date for the disputed domain name appeared to be April 26, 2017, and that the disputed domain name may currently be in a redemption period. In response, on May 5, 2017, Complainant requested that the Center accept the Complaint on a provisional basis. Thereafter, on the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Additionally, on May 8, 2017, in response to the Center’s inquiry regarding the expiry status of the disputed domain name, the Registrar notified the Center that it would ensure that the disputed domain name would remain locked and would not expire during the course of the proceeding. Complainant filed an amendment to the Complaint on May 12, 2017.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent of the default on June 9, 2017.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on June 21, 2017. 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
Complainant, Obagi Medical Products, Inc. is a division of the pharmaceutical company Valeant Pharmaceuticals North America, LLC. Complainant offers a variety of skin care products and services under its OBAGI mark. On November 10, 1998, Complainant obtained registration in the United States for its OBAGI mark (Registration No. 2,203,028). In addition, Complainant also owns numerous United States registrations for trademarks comprising OBAGI. Complainant has registered the domain name and operates the associated website to promote its products and services.
Respondent registered the disputed domain name on April 26, 2003. 5. Parties’ Contentions A. Complainant
According to Complainant, the disputed domain name is “highly similar” to the OBAGI mark, lacking features that would distinguish it from the mark. Complainant argues that the addition of “-me” and “.com” fail to differentiate the disputed domain name from Complainant’s mark.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known as “Obagi-Me” and as Complainant has not authorized Respondent to use the mark. Additionally, Complainant argues that Respondent uses the disputed domain name to redirect Internet traffic to “,” a website that is not affiliated with Complainant but that advertises a number of Obagi brand products for sale. According to Complainant, the Obagi products promoted on “” are offered for sale without the conditions of sale that Complainant imposes. Complainant maintains that “” advertises and appears to sell several prescription-only Obagi products without attempting to verify that the products are being sold subject to valid prescriptions.
Moreover, Complainant argues that Respondent is not a reseller making a bona fide offering of goods under Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, because neither “www.” nor “” disclose that they are not affiliated with Complainant.
Finally, Complainant makes its case for bad faith registration by pointing out that Respondent’s awareness of Complainant’s preexisting trademark rights in OBAGI can be inferred from the fact that both “www.obagi‑” and “” appear to be designed solely around the sale of Obagi products. As for bad faith use, Complainant argues that Respondent uses the disputed domain name for the purpose of creating the impression that websites accessed through the domain name are affiliated or authorized by Complainant. B. Respondent
Respondent did not reply to the Complaint. 6. Discussion and Findings A. Identical or Confusingly Similar
Based on the trademark registrations, the Panel finds that Complainant has rights in the OBAGI mark. The disputed domain name is confusingly similar to the OBAGI mark because it incorporates the mark in its entirety and the addition of the “-me” and the generic Top-Level Domain “.com” are not sufficient to dispel the confusing similarity with Complainant’s mark. Accordingly, Complainant has satisfied paragraph 4(a)(i) if the Policy. B. Rights or Legitimate Interests
Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. Resellers may, of course, sell branded products provided they do so in good faith and avoid confusing Internet users into believing they are affiliated with owner of the trademark. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Respondent’s site fails the Oki Data test. The evidence submitted by Complainant shows that the disputed domain name resolves to a page with grayed out content. Still visible, however, is a top banner listing various Obagi products and a list of Obagi skin care products and apparent links to Obagi product resources in the body of the page. Superimposed on the page is the message:
This notice does not explain or disclaim any relationship to Complainant. On the contrary, it suggests Complainant has changed its name or at least its home website to . Internet users searching for Obagi products and landing on the “www.” page may mistakenly conclude that they have accessed Complainant’s website and that Complainant has changed its name to “.” This notice and the other content on the page are ambiguous at best and certainly insufficient to qualify as a “bona fide” use.
Respondent’s redirecting Internet users to the site is not a bona fide use of Complainant’s trademark. The linked page does not disclaim or explain any relationship with Complainant or otherwise satisfy to Oki Data guidelines. More importantly, Respondent does not deny Complainant’s allegation, which it supports with a sworn statement, that many of its products listed (with hyperlinks) on webpage and offered for sale on the linked page are subject to “prescription only” restrictions. Selling “prescription only” medications without requiring a prescription is not a bona fide use. F. Hoffmann-La Roche AG v. Shop User, WIPO Case No. D2014-1560(online selling of prescription Valium not bona fide and bad faith); Roche Products Inc. v. RX World, Nils Bor,WIPO Case No. D2010-1893 (selling prescription medications without a prescription was an “act of unfair competition which may cause significant harm to the Complainant’s reputation and negative consequences to those taking medication which may not be appropriate to them” and, consequently, not bona fide use); Roche Products Inc. v. WhoisGuard Protected / overnight, Thomas Koch,WIPO Case No. D2010-1097 (offering a prescription drug for sale without a prescription is not a bona fide offering of goods). Respondent does not distinguish these cases by making the sales via a redirected or linked site. Respondent’s redirecting Internet users to a website where “prescription only” restrictions are ignored is not a bona fide use of Complainant’s trademark.
Complainant has carried its burden of establishing a prima facie case, which Respondent has failed to rebut. Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Respondent registered the disputed domain name in bad faith. Respondent’s manifest purpose is to promote and resell Complainant’s products, so Respondent was obviously aware of Complainant and its reputation. There is also evidence that Respondent must have been aware of Complainant’s trademark rights when it registered the disputed domain name. Many of the photographs of Complainant’s products that Respondent displays show the trademark OBAGI, including the ® indicating that the mark is registered.
Respondent has also used the disputed domain name in bad faith. The record evidence indicates that the disputed domain name has been used to attract Internet users to the website “www.” and then to redirect them to a website that sells Complainant’s prescription products without prescriptions. Facilitating the circumvention of “prescription only” restrictions is bad faith use.
Complainant has satisfied paragraph 4(a)(ii) 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 Complainant.
Lawrence K. Nodine
Sole Panelist
Date: July 5, 2017
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