The Complainant is Isdin S.A. of Barcelona, Spain, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2017. On September 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2017.
The Center appointed Ana María Pacón as the sole panelist in this matter on November 6, 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
The Complainant was founded in 1975 and is a leader in the dermatological market in Spain with strong presence in the gynecological, pediatric and oral care markets. Currently, the Complainant is present in more than 30 countries, among others, Spain, Italy, Portugal, Germany, Belgium, France, Andorra, Argentina, Brazil, Chile, Colombia, Mexico, Peru, the United States of America (“US”), Canada, China, South Africa, Lebanon, Morocco, and the Republic of Korea.
The Complainant has numerous trademark registrations (more than 2,500), registered throughout the world, 488 containing the word ISDIN and 136 of which consist of the word ISDIN as such. These trademarks cover a wide range of goods and services including skin care products, hair care products, and many other health and beauty care products. For example:
(a) Spanish trademark M0332000 for the word mark ISDIN, filed in 1958;
(b) European Union trade mark 001472547 for the word mark ISDIN, registered on December 1, 2005;
(c) Brazilian trademark 750226447 for the word mark ISDIN with a priority date of October 16, 1975;
(d) Indian trademark 1268396 for the word mark ISDIN, with a “journal date” of February 21, 2005; and
(e) US trademark 3947089 for the word mark ISDIN, registered on April 19, 2011.
Furthermore, the Complainant is the owner of the domain name since 1998. It is also the owner of over 250 domain names, with more than half either containing or consisting of the term ISDIN. In January 2016, the Complainant launched a supplier platform on the subdomain , which by February 2016 had over 1,200 users.
The disputed domain name was registered on February 5, 2016. The disputed domain name resolves to a parking page displaying various sponsored links, where the disputed domain name is offered for sale. 5. Parties’ Contentions A. Complainant
The Complainant states that each of the three elements of paragraph 4(a) of the Policy is satisfied:
- The name “ISDIN” has been registered by the Complainant as a trademark in several countries all over the world. ISDIN is a well-known trademark.
- The disputed domain name comprises the word “isdin”, which is identical to its registered trademark. The addition of the descriptive term “love”, widely used in the pharmaceutical and cosmetic sector, does not avoid a finding of confusing similarity, and the generic Top-Level Domain (“gTLD”) “.com,” is not relevant since it is not taken into account in assessing identity or confusing similarity.
- The Respondent is not entitled to use the disputed domain name and has never been, and is not currently, commonly known by the disputed domain name.
- The Respondent doesn’t have any registered trademark corresponding to the disputed domain name.
- The disputed domain name is redirecting to various websites. At first the website displays the message “redirecting” before taking users to different unrelated websites. Further, the disputed domain name occasionally redirects Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business, and others including links promoting criminal activity. Presumably, the Respondent receives pay-per-click fees from the linked websites. Additionally, the disputed domain name occasionally redirects to a website that attempts to infect Internet users’ computers with viruses or malware.
- The disputed domain name is being offered for sale in an amount that far exceeds the Respondent’s out of pocket expenses in registering the domain name.
- The Respondent knew or should have known of the Complainant’s trademark rights and therefore its registration of the disputed domain name was undertaken in bad faith.
- The Respondent is not making a bona fide offering of goods or services or legitimate noncommercial fair use of the disputed domain name.
- The Respondent has registered and used the disputed domain name in bad faith with the intent of disrupting the business of the Complainant by diverting Internet users to an aggregator website.
- The Respondent had employed a privacy service to hide its identity, which past UDRP panels have held serves as evidence of bad faith registration and use.
- The Respondent made no reply to the Complainant’s cease-and-desist letters of June 27, July 7 and July 17, 2017. The Respondent’s apparent unwillingness to find an amicable solution further demonstrates its bad faith in this regard. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the 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) 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) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant must establish two elements under paragraph 4(a)(i) of the Policy — that the Complainant has rights in a trademark or a service mark, and that the disputed domain name is identical or confusingly similar to the mark in which the Complainant has rights.
The Complainant has provided sufficient evidence of its rights in the trademark ISDIN in several countries around the world.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products or services for which the domain name is used or other marketing and use factors usually considered in trademark infringement (see F. Hoffmann La Roche AG v. P Martin,WIPO Case No. D2009-0323; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR,WIPO Case No. D2001-1480; and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698).
The relevant trademark would generally need to be recognizable as such within the domain name, the addition of common terms is typically insufficient to avoid a finding of confusing similarity. In the present case, the disputed domain name contains the trademark ISDIN in its entirety.
The evidential record demonstrates that the term “love” is widely used in the pharmaceutical and cosmetic industry. The addition of a term which is descriptive of a complainant’s goods or services will not serve to distinguish a respondent’s domain name from the relevant trademark (see Revlon Consumer Products Corporation v. Vladimir Sangco,WIPO Case No. D2010-1774; Viacom International Inc. v. Transure Enterprise Ltd.,WIPO Case No. D2009-1616; and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110). In this case, the descriptive term “love” has been appended to the Complainant’s registered ISDIN trademark, which remains clearly recognizable in the disputed domain name.
Additionally, it is well established that a gTLD suffix, such as “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy (see Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429).
The Panel thus finds that the disputed domain name is confusingly similar to the Complainant’s ISDIN trademark and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
The following are examples of circumstances where a respondent may demonstrate its rights or legitimate interests in a domain name (paragraph 4(c) of the Policy):
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue.”
However, it is widely recognized that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show any circumstances demonstrating its rights or legitimate interests, including but not limited to one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may be deemed to lack rights or legitimate interests in the domain name (see Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant confirms that it has not licensed or authorized the Respondent to use or register domain names incorporating its ISDIN trademark in any fashion and that there is no connection between the Respondent and the Complainant.
The Respondent is not commonly known by the disputed domain name.
The disputed domain name is used only to direct Internet users to a parked aggregator website. At first the website found at the domain name displays the message “redirecting” before taking users to different unrelated websites. Further, the domain name occasionally redirects Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business. Presumably, the Respondent receives pay-per-click fees from the linked websites that are listed at the disputed domain name’s website. Additionally, the disputed domain name occasionally redirects to a website that attempts to infect Internet users’ computers with viruses or malware. Prior UDRP decisions have consistently held that respondents that monetize domain names containing third-party Trademarks and using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.9; see also Enrique Salinas Pérez v. B, Inventory Management,WIPO Case No. D2011-1950; Archer-Daniels-Midland Company v. Wang De Bing,WIPO Case No. D2017-0363). Also it has been well established that use of a domain name to spread malware or viruses to Internet users is not a legitimate use of a domain name (see Wikimedia Foundation, Inc. v. Domain Administrator, Fundacion Private Whois / Domain Admin, Whois Privacy Corp / Ryan G Foo, PPA Media Services,WIPO Case No. D2015-0967). The Respondent has not come forward to assert any rights or legitimate interests in the disputed domain name, and the Complainant’s prima facie case remains unrebutted.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
Even if the Respondent has not responded to the Complaint, as is the case here, the Complainant has to prove under the Policy that the Respondent has registered and is using the disputed domain name in bad faith.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent registered and used the disputed domain name in bad faith. The language of paragraph 4(a)(iii) of the Policy requires that both bad faith registration and bad faith use be established.
Pursuant to paragraph 4(b) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
(i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location.
As to registration in bad faith, the Complainant has asserted that given the well-known nature and reputation of its trademark ISDIN, it is not possible to conceive that the Respondent would have been unaware of this fact at the time of registration. In the Panel’s opinion, in light of the Complainant’s numerous trademark and domain name registrations of the disputed domain name it cannot reasonably be argued that the Respondent could have been unaware of the trademark rights vested therein when registering the disputed domain name (see Inter-IKEA Systems B.V. v. McLaughlin Mobility,WIPO Case No. D2000-0499). The disputed domain name differs from the Complainant’s trademark only in the addition of the descriptive term “love”, indicating that the Respondent was likely aware of the potential for Internet user confusion. See the WIPO Overview 3.0, section 3.2.
In addition to the Complainant’s widely-known trademarks, the Respondent’s registration of the disputed domain name (on February 5, 2016) shortly after the Complainant launched its new client platform, “Love ISDIN” in January 2016, indicates that the Respondent should have known of the existence of the Complainant’s trademarks. Previous UDRP panels have held that registration of a domain name related to and shortly after an announcement or event by a complainant constitutes opportunistic bad faith registration (see Mr. Severiano Ballesteros Sota, Fairway, S.A. and Amen Corner, S.A. v. Patrick Waldron,WIPO Case No. D2001-0351).
Moreover, the disputed domain name is almost identical to the Complainant’s subdomain and is likely to confuse the public and make them believe that the domain name is in some way connected with or endorsed by the Complainant.
As to use in bad faith, as noted above, the disputed domain name was being used to redirect to others websites. The use of the disputed domain name incorporating the Complainant’s trademark to resolve to a parking page displaying sponsored links is evidence of use in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Further, the disputed domain name resolves to a website offering the domain name for sale. It is well established that seeking to profit from the sale of a confusingly similar domain name that incorporates a third party’s trademark demonstrates bad faith (see Bryant Tyson v. Fundacion Private Whois/ Domain IP Holding Corp.,WIPO Case No. D2013-0529).
Failure to reply to a cease and desist letter may in some circumstances be relevant to the assessment of whether a domain name was registered and is being used in bad faith. For example, it could undermine the credibility of an explanation proffered at a later stage which one might have expected to have been given earlier, if true (see Bright Horizons Family Solutions Inc., Allmont Limited, Bright Horizons Limited Partnership and Bright Horizons Family Solutions Ltd. v. Vertical Axis, Inc,WIPO Case No. D2007-0795). In this case, the Panel considers that the Respondent’s failure to reply to the Complainant’s cease-and-desist letters of June 27, July 7 and July 17, 2017, is further evidence of bad faith.
Finally, the Respondent has employed a privacy service to hide its identity, which past UDRP panels have held serves as further evidence of bad faith registration and use (see Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc.,WIPO Case No. D2003-0230).
Thus the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and the requirement of paragraph 4(a)(iii) of the Policy has also been met. 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.
Ana María Pacón
Sole Panelist
Date: November 20, 2017
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