Complainant is Dr. Ludwig Manfred Jacob of Heidesheim, Germany, represented by BPM Legal, Germany.
Respondent is Whois Privacy Shield Services of Irvine, California, United States of America ("United States") / Kohei Yamaguchi of Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Isoroku Yamamoto, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 10, 2017. On October 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 13, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 13, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 16, 2017.
The Center verified that the Complaint together with the amended Complaint (hereafter referred to as 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 October 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 7, 2017.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on November 16, 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 is a medical doctor in Germany and the founder and shareholder of the German company, Dr. Jacob's Medical GmbH, which was established in 1997. For 20 years, the company has been developing high-quality food supplements, which are marketed internationally. In addition, Complainant also founded the Dr. Jacobs Institut, which publishes papers of various authors to contribute to an understanding of naturopathy.
Complainant is the owner of several trademark registrations containing the string "DR. JACOB'S", including:
Country
Trademark
Registered Owner
Registration No.
Registration Date
Classes
DE
DR. JACOB'S
Dr. Ludwig Manfred Jacob
30200186
December 19,
2002
3, 5, 32
EU
DR. JACOB'S
Dr. Ludwig Manfred Jacob
005347505
November 6, 2007
5, 10, 32, 44
CH
DR. JACOB'S
Dr. Ludwig Manfred Jacob
P-565675
December 13,
2007
5, 10, 32, 44
NO, PH, TR,
US, AT, BX,
CN, CZ, EG,
ES, FR, HR,
HU, IR, IT,
MA, PL, RO, RU, SI, US
DR. JACOB'S
Dr. Ludwig Manfred Jacob
1142615
October 17, 2012
3, 5, 32
Complainant and his companies own several domain names containing the DR. JACOB'S mark or variations thereof, including , , , , , , , , , , , and .
Complainant previously owned the Domain Name, which was first registered on April 13, 2007 by Complainant's company, Dr. Jacob's Medical GmbH, and was used in commerce by Complainant for more than 10 years. Complainant accidentally failed to renew the Domain Name on May 12, 2017 and it was immediately registered by Respondent on June 16, 2017, after the grace period ended and it became publically available.
The Domain Name is used in connection with a Japanese beauty-related website featuring different articles. 5. Parties' Contentions A. Complainant (i) Identical or confusingly similar
Complainant has submitted evidence of ownership of a number of registered trademarks, as indicated above. Furthermore, Complainant states he has a strong presence on the Internet, as he and his companies own several domain names containing the DR. JACOB'S mark. Complainant states the mark DR. JACOB'S is, to the best of his knowledge and belief, solely connected with Complainant and his businesses, as shown by a Google search. Furthermore, to Complainant's knowledge and belief, the string "Dr. Jacob's" is not registered as trademark in the name of any other party worldwide.
Complainant submits the Domain Name fully incorporates the well-established DR. JACOB'S marks and is identical to such marks. Further, the specific generic Top-Level domain ("gTLD") in which the Domain Name is registered is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between Complainant's DR. JACOB'S trademark and the Domain Name. (ii) Rights or legitimate interests
Complainant states that he has not licensed or otherwise permitted Respondent to use any of his DR. JACOB'S trademarks and has not permitted Respondent to apply for or use any domain name incorporating the marks. These circumstances themselves are sufficient to constitute a prima facie showing by Complainant of the absence of rights or legitimate interests in the Domain Name on the part of Respondent.
Furthermore, Complainant states there is no evidence of Respondent's 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 within the meaning of paragraph 4(c)(i) of the Policy. The website at the Domain Name is used in connection with a website featuring beauty-related content and thus capitalizing on Complainant's trademark. As Complainant's DR. JACOB'S marks cover, inter alia, "hygienic and beauty care for human beings" in international class 44, the present use of the Domain Name also constitutes a trademark infringement. Such use is neither a bona fide use of the Domain Name pursuant to paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy.
Finally, Complainant asserts there is no evidence suggesting that Respondent legitimately trades under the Domain Name or the name "drjacobs," or is commonly known by the Domain Name or the name "Dr. Jacobs." Under these circumstances, Complainant contends there is no doubt that Respondent has no rights or legitimate interests in respect of the Domain Name and the requirement of paragraph 4(a)(ii) of the Policy is satisfied. (iii) Registered and used in bad faith
Complainant states that based on his high profile worldwide, it is inconceivable that Respondent registered the Domain Name unaware of Complainant and his rights in the highly distinctive and well-established DR. JACOB'S marks. In addition, Respondent registered the Domain Name after Complainant failed to renew it. It is obvious that Respondent monitored the Domain Name and immediately registered it in order to exploit Complainant's longstanding marketing efforts related to the Domain Name. The chronology of this case clearly evidences that Respondent was aware of Complainant and its rights in the name "Dr. Jacob's" at the time of the registration of the Domain Name.
As to bad faith use, Complainant contends that Respondent uses the Domain Name in connection with a beauty-related website and is, in all likelihood, trying to divert Internet users searching for Complainant and his products, to obtain commercial gain. The lack of Respondent's own rights to or legitimate interests in the Domain Name, as well as redirecting the Domain Name to a Respondent-owned (and competing) website, has in many UDRP decisions been found to constitute bad faith under paragraph 4(b)(iv) of the Policy.
In addition, Complainant argues that Respondent's registration of the Domain Name prevents Complainant from reflecting its trademarks in a corresponding domain name and Respondent has engaged in a pattern of such conduct as set out in paragraph 4(b)(ii) of the Policy. Complainant has submitted evidence to show that Respondent holds at least one additional domain name registration, which includes a well-known trademark, namely . Further, as the elements stated in paragraph 4(b) of the Policy are non-exhaustive, practice has regarded a number of other indications and aspects as establishing bad faith. The fact that Respondent registered a Domain Name that includes a trademark that is obviously connected with Complainant and his products also supports the finding of bad faith as the use of such Domain Name by someone with no connection to Complainant or his products suggests opportunistic bad faith. Complainant further asserts that Respondent's use of the Domain Name disrupts Complainant's business and is capable of reducing the number of visitors to Complainant's website, which may adversely affect Complainant's business and therefore constitutes bad faith. The registration of the Domain Name by Respondent also constitutes an abusive threat hanging over the head of Complainant, which also supports a finding of bad faith.
For all of the foregoing reasons, Complainant contends that Respondent has registered and is using the Domain Name in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
As has been recited in many UDRP decisions, in order to succeed in his claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its DR. JACOB'S trademark, based on its trademark registrations in numerous jurisdictions. Further, the Panel determines that the Domain Name is identical to the Complainant's mark, as the Domain Name incorporates the mark in its entirety and adds no other element.
Accordingly, the Panel finds that that the Domain Name is identical to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Regarding the second element of the Policy, section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), states that "where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
Here, the Panel finds that Complainant has made out a prima facie case, while Respondent has failed to respond to the Complaint. The Panel finds that Complainant has not authorized Respondent to use its DR. JACOB'S mark; that Respondent is not commonly known by the Domain Name "Dr. Jacobs," that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services. Instead, the evidence indicates that Domain Name has been used in connection with a Japanese beauty-related website, thereby competing in the same field in which Complainant provides products and services (e.g., Complainant's DR, JACOB'S marks cover hygienic and beauty care for human beings in international class 44).
The Panel finds that Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. In the Panel's opinion, there is nothing in the past and present use of the Domain Name by Respondent or more generally in the circumstances of its registration and use, which indicates that Respondent has any rights or legitimate interests in the Domain Name.
The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that "bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant's mark".
Here, the Panel finds that the Domain Name was registered and is being used in bad faith. The evidence indicates that Respondent registered the Domain Name, which incorporates Complainant's DR. JACOB'S mark in its entirety, in an effort to target Complainant. There is no other plausible reason for why Respondent registered the Domain Name. See WIPO Overview 3.0, section 3.2.1, ("Particular circumstances panels may take into account in assessing whether the respondent's registration of a domain name is in bad faith include: […] (iv) the timing and circumstances of the registration (particularly following a product launch, or the complainant's failure to renew its domain name registration, […], (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent's choice of the domain name").
Further, as discussed above, the Domain Name has been used in connection with a Japanese beauty-related website, which suggests Respondent's intent to trade on the reputation of Complainant's DR. JACOB'S brand to attract Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's brand, for commercial gain. This is bad faith. See e.g., Worldpay Limited v. Surojit Manna, Worldpay,WIPO Case No. D2017-0160.
In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has 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 Complainant.
Christopher S. Gibson
Sole Panelist
Date: December 10, 2017
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