Complainant is Bayer HealthCare, LLC, United States of America (“United States” or “US”), represented by Lowenstein Sandler LLP, United States.
Respondent is Privacy Protect, LLC, United States / Erika Turovsky, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2020. On February 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 28, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 3, 2020. 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 March 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 27, 2020. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on April 2, 2020. 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 operates a global enterprise with core competencies in the fields of healthcare, nutrition, and high-tech materials. It has been using the RID trademark (“RID Mark”) continuously in the United States since at least 1975 in connection with lice treatment products. In 2019, its RID-branded products generated approximately USD 20 million in gross sales in the United States alone. It has invested an average of USD USD 1.5 to USD 2 million annually in advertising and promotion in connection with RID-branded products. Complainant owns numerous United States registrations for the RID Mark, including US registrations 2,276,153 (registered on September 7, 1999); 2,276,127 (registered on September 7, 1999); 2,290,522 (registered on November 2, 1999); and 3,999,088 (registered on July 19, 2011). Complainant also owns the Respondent registered the disputed domain name on July 21, 2015, which purports to be a business for lice treatment. However, Complainant could not verify whether Respondent operated such a business and there is no evidence on record supporting the existence of a functioning business operation. 5. Parties’ Contentions A. Complainant Complainant alleges that the disputed domain name is confusingly similar to Complainant’s RID Mark because it reproduces identically and entirely the RID mark. Complainant also alleges that the disputed domain name is identical to its own Complainant further alleges that Respondent has no legitimate interest in the disputed domain name because the disputed domain name was registered well after Complainant established its rights in its RID Mark, Respondent was never licensed nor in any way authorized to use the RID Mark, and Respondent is not associated or affiliated to Complainant in any way. Complainant alleges that Respondent is not commonly known by the disputed domain name. Complainant also asserts that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name since it is being used to misleadingly divert customers to its webpage for Respondent’s own commercial gain. Lastly, Complainant alleges that Respondent registered and used the disputed domain name in bad faith. According to Complainant, Respondent must have had constructive or actual knowledge of Complainant’s rights in the RID Mark when Respondent registered the disputed domain name because the RID Mark was registered in the United States 40 years before the disputed domain name was registered. Complainant also asserts that, given the RID Mark’s national and worldwide recognition, Respondent simply could not have chosen to register the disputed domain name incorporating the RID Mark entirely for any other reason than capitalizing on Complainant’s goodwill and reputation by attempting to divert consumers seeking to locate websites owned or authorized by Complainant. Complainant asserts that this activity constitutes a disruption of Complainant’s business and sales. Lastly, Complainant notes that Respondent’s use of a privacy service to mask its identity further evinces bad faith registration and use. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and, (iii) the disputed domain name was registered and is being used in bad faith. Furthermore, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3, states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true”. Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340 A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the RID Mark through its United States registrations With Complainant’s rights in the RID Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the TLD in which each domain name is registered) is identical or confusingly similar to Complainant’s RID Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. Here, Complainant’s RID Mark is fully incorporated in the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s RID trademark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name: (i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. The evidence on record shows that the disputed domain name, which incorporates Complainant’s mark entirely, was registered well after Complainant established its rights in the RID Mark. There is no evidence on record that Complainant authorized, licensed, or permitted Respondent to use Complainant’s RID Mark in any way. Furthermore, the evidence on record shows that the disputed domain name purports to offer lice treatment services potentially in competition with services offered by Complainant in connection with its RID Mark. Respondent is clearly using Complainant’s RID Mark to misleadingly divert consumers to its website for ostensible commercial gain, based on the confusion caused by its use of the RID Mark without authorization. Clearly, the disputed domain name is not being used in furtherance of a legitimate noncommercial or fair use. Furthermore, Complainant has presented evidence that the disputed domain name’s alleged payment option is in fact an inactive graphic image through which no purchases can be made. The evidence on record also suggests that the disputed domain name’s only functional interface is a section where visitors may submit questions by providing their full name, email address, and phone number. Complainant also alleged that the phone number displayed in Respondent’s website is actually the phone number for a company providing senior services, with no relation to Respondent’s purported lice treatment business. Considering the evidence on hand and the absence of a response, the Panel accepts as true Complainant’s allegations that Respondent is not making any bona fide offering of goods and services through the disputed domain name, even though it is ostensibly set up for commercial purposes. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005). Respondent has failed to rebut Complainant’s allegations and evidence, and therefore, the Panel concludes that Respondent does not have rights or a legitimate interest in the disputed domain name within the meaning of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a 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 a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. Complainant provided ample evidence to show the widespread use and numerous US registrations of the RID Mark that long predates Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of the RID Mark when Respondent registered the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainant’s RID Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith, WIPO Overview 3.0, section 3.1.4. Furthermore, the disputed domain name at least purports to be a business that offers services identical or competitive with those offered under Complainant’s RID Mark, even though there are clear indications that there may not be an actual functioning business operation behind the disputed domain name. Therefore, Respondent’s registration and use of the disputed domain name not only clearly indicate full knowledge of Complainant’s RID Mark, but also an attempt to misleadingly divert consumers for its own commercial gain, possibly in connection with fraudulent activities, and/or an attempt to otherwise profit from unauthorized use of Complainant’s mark. For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name were in bad faith, pursuant to paragraph 4(b)(iv) 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 Brian J. Winterfeldt
Sole Panelist
Date: April 8, 2020
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