The Complainant is Clinic Care Pty Limited of Alexandria, New South Wales, Australia, represented by Duncan Cotterill Lawyers, Australia.
The Respondent is Emma Redgate Payne (also known as Emma Johnson) of Auckland, New Zealand, represented by Kemps Weir Lawyers, New Zealand / Shortland Chambers, New Zealand. 2. The Domain Name and Registrar
The disputed domain name is registered with Aust Domains International Pty Ltd dba Aust Domains, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2011. On September 19, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2011 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 October 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2011. The Response was filed with the Center on October 27, 2011.
The Center appointed John Swinson as the sole panelist in this matter on November 15, 2011. 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.
On November 30, 2011, the Panel issued Administrative Procedural Order No. 1 relating to the standing of the Complainant to bring these proceedings. On December 6, 2011, the Complainant responded to this Procedural Order. On December 8, 2011, the Respondent responded to the Complainant’s submissions in response to the Procedural Order. On December 9, 2011, the Complainant sent a further email communication to the Centre. The Center responded on behalf of the Panel on December 12, 2011. 4. Factual Background
The Complainant is Clinic Care Pty Limited. The Complainant was incorporated on July 22, 2008.
The Respondent is Emma Redgate Payne (also known as Emma Johnson). The Respondent currently trades in Australia and New Zealand under the name “Dr Dermacare”.
The disputed domain name was registered by the Respondent in January 2006. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions:
Identical or Confusingly Similar
The disputed domain name is identical to the trade mark DERMAROLLER in which the Complainant has rights.
The trade mark DERMAROLLER came into being in 1999 when the Dermaroller product was invented by Mr Horst Liebl (“the Licensor”) who has entered into a license arrangement for the territories of Australia and New Zealand with the Complainant. At the time that the Licensor created the term “Dermaroller” it did not exist in literature or as a reference to any sort of medical device or skin-needling technique.
The Licensor registered the mark TOP-ROL DERMAROLLER on August 29, 2011 and the DERMAROLLER logo on November 19, 2008 with the Office for Harmonization in the Internal Market. The DERMAROLLER word mark was registered by the Licensor in the United States in December 2006 and in Australia by the Complainant on behalf of the Licensor in August 2009. The Complainant has also filed a word mark application on the Licensor’s behalf in New Zealand.
Since inventing the product and the name in 1999, the trade mark DERMAROLLER has been used by the Licensor for the marketing and distribution of the corresponding product throughout the world, and it is the name of the Licensor’s company. The aforementioned trade marks have been used in respect of DERMAROLLER products since their invention in 1999.
While the DERMAROLLER product has been copied, the quality of the product bearing the DERMAROLLER trade mark is superior and is widely reputed.
The DERMAROLLER trade mark is used upon the products themselves and on all supporting documentation accompanying and promoting the products. It has been used in relation to the products in all the states and territories of Australia by both the Complainant and the Licensor.
Significant investment has been committed to the promotion of the trade mark DERMAROLLER by the Complainant and the Licensor in Australia. It has been and continues to be promoted extensively through means of print media, word of mouth, lectures, workshops and trade fairs across Australia.
Rights or Legitimate Interests
All sales of the DERMAROLLER product in Australia and New Zealand are governed by a licensing arrangement with the Complainant. The Respondent is not a licensee of the DERMAROLLER product. Although the Respondent was a licensee in New Zealand, the Respondent is no longer a licensee and has no residual rights in the brand and trade marks.
While there has been some delay between the Respondent ceasing the licensee relationship with the Licensor and action being taken in relation to the use of the disputed domain name in question, the delay does not give rise to any implied transfer of rights in the trade mark. Even if it is found that the Licensor’s actions constitute implied consent, the recent requests to the Respondent to cease using the trade mark amounts to an express revocation of that implicit consent.
The term “Dermaroller” is not descriptive of the type of product sold by the Respondent. It is a brand name belonging to the Licensor and licensed to the Complainant. While the terms “Derma” and “Roller” together describe a type of product which rolls across the skin, at the time of the DERMAROLLER’s invention, the combined term DERMAROLLER did not exist and was not used to describe the sort of product invented by the Licensor. It is through the reputation and goodwill of the Licensor’s DERMAROLLER product that it has become synonymous with that style of product.
The fact that the Respondent does not provide any indication on her website that she is not associated with the Complainant or the Complainant’s product, arguably indicates an intention to mislead the public into believing there is an association between the relevant trade mark and the disputed domain name.
Registered or Subsequently Used in Bad Faith
The Respondent has used the disputed domain name in bad faith. While not originally registered in bad faith, the Respondent continued to use the disputed domain name after repeated requests to stop using the disputed domain name and this constitutes use in bad faith.
The Licensor’s brand and trade marks have been actively used in Australia by the Licensor and Complainant since 2003.
The disputed domain name clearly uses the Licensor’s trade marks and thus infringes the Licensor’s Australian registered trade mark. The disputed domain name is also identical to the Licensor’s own domain names which will result in obvious confusion amongst consumers and will lead to a mistaken belief that the disputed domain name is associated with the Licensor’s website. The Licensor’s websites have been active since 2001.
The Respondent’s continued use of the term DERMAROLLER in the disputed domain name and to describe her product is clear infringement of the Complainant’s trade mark and a clear attempt to trade off the goodwill of the Complainant’s product and brand.
The Complainant believes there is significant risk of confusion in the market place through the Respondent’s use of the disputed domain name and dilution of value of the DERMAROLLER trade mark in Australia because of the Respondent’s inferior product.
The Respondent is clearly trying to trade off the goodwill and reputation of the Licensor and Complainant as there is no attempt on the Respondent’s website resolving from the disputed domain name to assert independence from the Complainant’s company, trade mark and products.
Even though the website resolving from the disputed domain name and the Respondent’s branding appears visually different from the Complainant’s and Licensor’s, this does not alleviate any bad faith on the part of the Respondent or potential confusion to the public.
The Complainant requests that the disputed domain name be transferred to the Complainant. Further Submissions
The Complainant confirmed that the DERMAROLLER product was invented by Horst Liebl in 1999 and was patented in Germany in 2000. The company, Dermaroller S.a.r.l., was named after the product and manufactures medical devices.
In November 2008, Dermaroller S.a.r.l. and Horst Liebl executed an exclusive licence agreement with Mr. Sean Abel of Copper Care Pty Limited to distribute the DERMAROLLER products in Australia and New Zealand. The agreement includes rights to use intellectual property.
In September 2008, Mr Sean Abel changed the entity name under which he distributed the DERMAROLLER from Copper Care Pty Limited to Clinic Care Pty Limited, the Complainant in these proceedings.
When registering the DERMAROLLER trade mark in Australia, Horst Liebl nominated his wife Edelgard Liebl as the registrant of the trade mark.
The Complainant has been using the trade mark pursuant to the Agreement. Nevertheless, for the avoidance of doubt, Dermaroller S.a.r.l., Edelgard Liebl and the Complainant have now executed a Supplementary Licence Agreement dated December 2, 2011. B. Respondent
The Respondent denies that the Complainant is entitled to the disputed domain name for the following reasons:
(a) There has been significant delay in the Complaint being brought and as such, the Complainant and relevant others should be estopped from pursuing the Complaint.
(b) The Complainant only has limited rights in the name “dermaroller” due to its descriptive nature. There are numerous examples of other websites which sell “derma rollers” or “dermarollers”.
(c) There is a trade mark for the term “dermaroller” in Australia, but it is owned by Edelgard Liebl who is not a party to this proceeding.
(d) The person described as the “Licensor” in the Complaint, Mr Horst Liebl, has not sold the product directly to Australian customers and given the Complainant was not incorporated until 2008, the Respondent disagrees with the allegation that the Licensor and the Complainant have actively used the term “dermaroller” in Australia since 2003.
(e) The Respondent’s use of the disputed domain name has been:
i. in good faith at all times; and
ii. in relation to a legitimate business which has operated since 2006 and which thereby predates incorporation of the Complainant by two-and-a-half years. Specifically, the Respondent’s website has an online commerce component and is used directly for sales of her products. Thus, the Respondent has used the disputed domain name in connection with the offering of goods and service for sale in Australia since 2006, and has acquired a reputation in relation to the disputed domain name.
(f) The Respondent has a legitimate right to use the disputed domain name given the descriptive nature of the trade mark. The terms “derma” and “roller” and “dermaroller” are widely used in Australia to describe the products sold by the Complainant and the Respondent (and others).
(g) The Respondent has traded under the name “Dr Dermacare” since 2007, and previously traded under the name “Dermacare Products” from 2004 to 2006. The Respondent uses the disputed domain name to sell a range of skincare products including needle-type skin rollers which are used to treat acne scarring, wrinkles and other disorders of the skin. In January 2006, the Respondent registered the disputed domain name to sell her existing products, including rollers sourced from Mr Liebl, to Australian customers.
(h) Mr Liebl, was aware of the Respondent’s registration of the disputed domain name in 2006 and her continued use of the disputed domain name following the appointment of the Complainant as an alternative distributor of his products in Australia in 2008.
(i) The registration of the Australian trade mark is relatively recent, and the Respondent has invested a significant amount of time and money in her website and the disputed domain name prior to this date and being notified of the Complaint.
(j) The Respondent has acted in good faith at all times. In particular she has invested a significant amount of time and money in developing the website resolving from the disputed domain name, prior to and since 2008. She uses the disputed domain name to sell various skincare products under the brand “Dr. Dermacare”, including her own “Dr Dermacare”-branded dermaroller.
(k) The descriptive nature of the rights relief upon for the Complainant is highly relevant to the fact that the Respondent has acted in good faith, bearing in mind that she has sold her own dermarollers through the website hosted at the disputed domain name.
(l) The Respondent is not attempting to trade off the Complainant’s, or any other persons’, reputation and denies that consumers would mistakenly believe that there is an association between her and the Complainant as her website is clearly branded “Dr Dermacare”. The Complainant has not provided any evidence supporting any assertions to the contrary.
(m) The absence of a disclaimer is not evidence of bad faith on the part of the Respondent. There is no positive obligation on an innocent party to include a disclaimer on their website. This is particularly the case when the term at issue is highly descriptive.
(n) The Complainant has encroached on the Respondent’s intellectual property rights by choosing to use the same designer for its website and by appropriating one of the Respondent’s slogans.
(o) The Respondent has not infringed any of the relevant trade marks, but in any event, that is not an issue for determination in the current proceedings as the test under the auDRP is different from trade mark infringement.
(p) It would be unfair for the Respondent to lose her investment and for the Complainant to obtain the benefits of the Respondent’s investment and efforts. Further Submissions
The Respondent reiterated her position that the trade marks relied upon by the Complainant are descriptive and as such, the Respondent has not acted in bad faith. On that basis, ownership of the mark is largely irrelevant.
Moreover, the Respondent submitted that the Complainant’s further submissions did not comply with the Panel’s Procedural Order. The Procedural Order and the Complaint seemed to be predicated on a trade mark licence already being in place, however this was not the case. The fact that a Supplementary Licence Agreement was entered into following the Procedural Order reinforces that no such arrangements were in place prior to December 2, 2011.
The Agreement dated May 1, 2008 does not license intellectual property as such. It restricts registration of domain names by the Complainant, but it is essentially a distribution agreement. It does not deal with use of the term “dermaroller”. It does not cover entitlement to goodwill, and nor does the Supplementary Licence.
The initial term of the Agreement was 3 years, and thus it expired on April 30, 2011. While paragraph 18 of the Agreement permits the Agreement to be renewed for a further year on expiry of the initial period, the Complainant has failed to provide any evidence of extension of the term.
The Respondent notes that the Supplementary Licence does not have any retrospective effect. Even if the Complainant’s further submissions come within the terms of the Procedural Order, it is clear that the rights relied upon by the Complainant are quite limited. Since Horst and Edelgard Liebl are not Complainants in this matter, the Complainant is limited to relying upon rights based on its position as a non-exclusive licensee from December 2, 2011 onwards. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
(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 or subsequently used in bad faith.
The onus of proving these elements is on the Complainant.
The Panel notes that although the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) are distinct policies, both share substantial similarities. The Panel finds it therefore appropriate to refer to UDRP precedent when deciding this case. A. Procedural Issues
The Complainant delayed in bringing these proceedings. Although, delay in filing proceedings does not of itself prevent a complainant from succeeding, delay does make a case on the merits more difficult to establish in relation to the second and third elements (see e.g. Board of Trustees of the University of Arkansas v. FanM,WIPO Case No. D2009-1139). Here, the Panel does not find that delay is a determinative factor, but notes that it has indeed made it more difficult for the Complainant to establish the second and third elements.
Further, Procedural Order No. 1 gave the Complainant the opportunity to submit an amended Complaint joining the trade mark owner as Complainant, or, a copy of the trade mark licensing agreement and an authorisation to be registrant of the disputed domain name. The Complainant filed further submissions annexing relevant documentation. Outside of the time for compliance with Procedural Order No. 1, the Complainant sent an email communication to the Center asking how the Complainant may include further Complainants. Given this request was sent on December 9, 2011, outside the time for compliance with the Procedural Order, the Center responded on behalf of the Panel stating that the time for filing an amended Complaint had passed. As such, the Panel has only considered the information filed by the parties in the original Complaint and Response and pursuant to Procedural Order No. 1.
The Panel notes however that the Complainant’s failure to amend its Complainant has not been determinative of the outcome of this case. As will be seen below, the Panel’s decision did not ultimately turn on issues of trade mark ownership and authority to bring this action. In any event, determination of the identity of the relevant Complainant (and any corresponding consolidation issues) is completely within the purview of the Panel’s discretion and as such, the Panel may have added any parties it thought relevant as Complainants in this proceeding even in the absence of the Complainant filing an amended Complaint. Indeed, where a complainant relies on a common source of trade mark rights, previous UDRP panels have on occasion found it helpful to include all relevant rights holders as co-complainants (see WIPO Overview of WIPO Panel Vies on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 1.8).
However, as will be seen, it was not necessary for the Panel to finally decide issues relating to the proper Complainants to this proceeding. B. Rights or Legitimate Interests
The Policy provides that a complainant must establish a prima facie case that a respondent has no rights or legitimate interests in the disputed domain name. The Respondent must then rebut this presumption. Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name.
Here, the Respondent has demonstrated rights or legitimate interests in the disputed domain name by virtue of paragraph 4(c) of the Policy. That is, before any notice of the present dispute, the Respondent made bona fide use of the disputed domain name in connection with an offering of goods.
Importantly, the Panel accepts that the term “dermaroller”, and similar variations, is descriptive and is descriptive of the product offered by the Respondent via the website resolving from the disputed domain name. While the term “Dermaroller” is a registered trade mark in which the Complainant and / or others have rights, possession of such trade mark rights do not necessarily prohibit a panel from finding that a respondent has a legitimate interest in a disputed domain name containing the relevant term where it is also descriptive. There is nothing to indicate that the Respondent is using the disputed domain name to trade off, and benefit from, the trade mark value of the term “dermaroller”. The Panel finds that the Respondent is merely using the disputed domain name for its descriptive nature.
While persons related to the Complainant may have invented a product now known as a “dermaroller”, named the product accordingly and acquired trade mark rights in this name, the term is nevertheless descriptive of the product’s function and appearance and, as the evidence shows, is used by the many people in the descriptive sense. As the Respondent is using the disputed domain name in connection with the sale of “dermarollers” and uses the term in a descriptive sense, the Respondent has rights and legitimate interests in the disputed domain name.
It is also noted that the Australian trade mark registration for DERMAROLLER was filed in August 2009, which is a number of years after the Respondent first registered the disputed domain name.
Even though the Respondent may have been aware of the use of “dermaroller” by Horst Liebl and Dermaroller S.a.r.l when the Respondent registered the disputed domain name, there is no evidence to show that “dermaroller” was a trade mark in Australia or elsewhere at that time. On the record of this case, the Respondent has demonstrated to the satisfaction of this Panel that it registered the disputed domain name based on a good faith belief that its value was based on attraction as a descriptive term, and that the Respondent’s use of the disputed domain name is consistent with its attraction as a descriptive term.
Finally, the Panel notes that this is not the appropriate forum for determining issues of trade mark infringement or validity of trade mark registrations.
For these reasons, the Complaint must fail and it is not necessary for the Panel to consider the other elements of the Policy. The Panel does note however that the same considerations indicate that the Respondent has not used the disputed domain name in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Dated: December 15, 2011
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