The Complainants are Allergan, Inc., United States of America (“United States”) and Allergan Australia Pty Ltd, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Denise Costa, Australia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2021. On October 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 2021, 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” or “.auDRP”), 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 29, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2021.
The Center appointed John Swinson as the sole panelist in this matter on November 26, 2021. 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.
The Panel issued a Procedural Order to the parties on December 3, 2021, as discussed in detail below.
The Complainant responded to the Procedural Order on December 6, 2021, and submitted an amendment to the Complaint on December 9, 2021. On December 9, 2021, an email was received from an email address that was listed in the Registrar’s records as a contact email for the Respondent.
The First Complainant is a United States Delaware corporation based in California that develops and commercializes products for the ophthalmic, medical aesthetics, breast aesthetics, and other specialty markets. In this decision, the First Complainant will be referred to as the Complainant.
The Second Complainant is an Australian corporation, and is an entity related to the Complainant. The Second Complainant is the registered sponsor for the BOTOX products listed on the Australian Register of Therapeutic Good.
The Complainant owns nine Australian Trade Mark Registrations for or including BOTOX, including Registration No. 551279 for BOTOX in class 5, registered on August 5, 1993. The Second Complainant is an authorized user of this trade mark.
Recently, the Complainants were successful in an unrelated Federal Court of Australia appeal that decided that use of PROTOX was an infringement of the Complainant’s BOTOX trade mark. See Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCAFC 163.
The Respondent did not file a response so little is known about the Respondent. According to the Registrar’s records, the Respondent is a “sole trader” and the Respondent’s Australian Business Number is linked to a business in Hurstville, Sydney called “Xpress Hair”.
The Respondent registered the domain name
The Complainant’s Australian solicitors then sent demand letters to the Respondent.
Shortly after receiving a demand letter and speaking with the Complainant’s solicitors, the Respondent registered the disputed domain name. The disputed domain name was registered on April 3, 2020.
On October 29, 2021, the disputed domain name resolved to a website titled “Lux Hairbottox” that promoted a hair treatment. The website included content such as: “The Diamond Elixir by Artego is perhaps the most advanced and successful hair treatment formula yet”.
At the date of this decision, the disputed domain name does not resolve to an active website. The Instagram account that was at one time promoted on the website at the disputed domain name is no longer active.
5. Parties’ Contentions A. ComplainantIn summary, the Complainant made the following submissions:
The Complainant is a global healthcare business focused on developing and commercializing specialty pharmaceutical, biological, medical device, and over-the-counter products for the ophthalmic, medical aesthetics, breast aesthetics, and other specialty markets in more than 100 countries. The Complainant owns trade mark registrations in Australia for BOTOX, including the registration set out in section 4 above. BOTOX is an invented and distinctive brand name for its injectable product that is used to treat both cosmetic and therapeutic conditions.
The Respondent has used the terms “hairbotox” and “hairbottox” on the website at the disputed domain name.
The Respondent has not complied with demand letters send by the Complainant’s solicitors regarding infringement of the Complainant’s BOTOX trade mark.
The disputed domain name is confusingly similar with the BOTOX trade marks given the aural and visual similarities between the BOTOX Trade Marks and the word “bottox”.
The Respondent does not have legitimate rights in respect of the disputed domain name and is using the disputed domain name to leverage off the reputation of the BOTOX trade marks for commercial gain and to misleadingly divert consumers to the Respondent’s website.
The Respondent has no association with the Complainant and has not been licensed or authorised to use the disputed domain name, the BOTOX trade marks, or any substantially identical or deceptively similar trade marks. The Respondent does not own a registered business name or company name for “Hair Bottox”, or any similar name.
Despite the knowledge of the BOTOX trade mark, the Respondent made the decision to register the disputed domain name which features “bottox”, being a deliberate misspelling of BOTOX to attempt to circumvent the Complainant’s complaints and continue to trade and leverage off the reputation in the BOTOX trade mark. It can be inferred that the Respondent adopted the disputed domain name in bad faith and to leverage off the reputation in the BOTOX trade mark.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
On December 9, 2021, an email was received from an email address that was listed in the Registrar’s records as a contact email for the Respondent. In relevant part, the email stated: “I was the webmaster for the business when it was created, but i am no longer involved with it. Moreover, I believe that the business has closed down.”
6. Discussion and FindingsParagraph 4(a) of the auDRP provides that a complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a name, trademark 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 burden of proof of each element is borne by the Complainant.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that the Panel deems applicable.
A. Identical or Confusingly SimilarThe first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s name, trade mark or service mark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trade mark at the date the Complaint was filed and, if so, the disputed domain name must be identical or confusingly similar to the trade mark.
For present purposes, the Complainant has proven that it owns a registered trade mark for BOTOX as discussed in section 4 above.
On the question of identity or confusing similarity, what is required is simply a visual and aural comparison and assessment of the disputed domain name itself to the Complainant’s trade marks: see, for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd.,
WIPO Case No. DAU2002-0001. This test is narrower than and thus different to the question of “likelihood of confusion” under Australian trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location, or timing. Such matters, if relevant however, may fall for consideration under the other elements of the Policy. Argyle Diamonds Limited v. Domain Manager / Argyle Diamond Investments Pty Ltd,
WIPO Case No. DAU2021-0028.
Typically and as is appropriate in this case, it is permissible to disregard respectively the Top and Second Level Domains, “.com.au”, as a functional component of the domain naming system.
“Botox” is an invented and distinctive term. The term “bottox” used in the disputed domain name is a deliberate misspelling of the Complainant’s BOTOX trade mark. The addition of a letter “t” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trade mark, because the distinctive part of the disputed domain name (“bottox”) is aurally identical and visually very similar to the Complainant’s trade mark. Macquarie Group Limited v. McQuarie Group Pty Ltd / Roland Storti,
WIPO Case No. DAU2012-0028.
The term “hair” used in the disputed domain name is descriptive of the Respondent’s goods and services. The fact that the disputed name incorporates the word “hair” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s BOTOX trade mark.
Having regard to those matters, the disputed domain name is confusingly similar to the Complainant’s BOTOX trade mark.
The Complainant therefore has established the first requirement under the Policy.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(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 trade mark 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 trade mark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Previous panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See, e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, supra.
The Complainant states that the Respondent has no association with the Complainant and has not been licensed or authorised to use the disputed domain name, the BOTOX trade mark, or any substantially identical or deceptively similar trade mark.
The Respondent does not own a registered business name or company name for “Hair Bottox”, or any similar name. As stated above, the Respondent’s registered business name is “Xpress Hair”.
Further, as discussed below in reference to the third requirement, the Respondent’s use of the disputed domain name is not bona fide use.
The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name.
The Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name. The Panel finds that none of the circumstances listed in paragraph 4(c) of the Policy apply in the present circumstances.
Accordingly, the Panel considers the Complainant has established the second requirement under the Policy.
C. Registered or Subsequently Used in Bad FaithUnlike the UDRP, the requirements that the disputed domain name be registered or used in bad faith are disjunctive in the auDRP. That is, it is sufficient for the Complainant to show either that the disputed domain name was registered in bad faith or has been used in bad faith.
Paragraph 4(b) of the Policy provides that:
“b. Evidence of Registration or Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location; or
(v) if any of your representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner.”
As with paragraph 4(c), paragraph 4(b) is not an exhaustive listing of the circumstances in which a disputed domain name can be found to have been registered or used in bad faith. They are illustrative only.
On April 3, 2020, the Complainant’s solicitors wrote to the Respondent by email regarding the Respondent’s use of the domain name
The Respondent and the Complainant’s solicitor again spoke on April 8, 2020. According to the Complaint, the Respondent said that she intended to refer the April 3 letter to her solicitor. There is no correspondence from the Respondent’s solicitor in the case file.
Accordingly, it is evident that the Respondent registered the disputed domain name with knowledge of the Complainant’s BOTOX trade mark.
The Respondent registered the disputed domain name with a misspelling of the Complainant’s BOTOX trade mark. Whether this was done in the mistaken belief that this would solve her trade mark infringement question, or to annoy the Complainant, or to try to gain leverage in settlement discussions, is not clear. Regardless, registration of the disputed domain name in these circumstances is clearly bad faith registration under paragraph 4(b)(iii) of the Policy.
The Respondent has not filed a Response and hence has not availed herself of the opportunity to present any case of good faith that she might have. The Panel infers that none exists. Regal Funds Management Pty Limited v. WhoisGuard Protected, WhoisGuard, Inc. / John Clerk,
WIPO Case No. D2020-2773.
Further, use of the disputed domain name to promote a competing hair care treatment is bad faith use of the disputed domain name under paragraph 4(b)(iv) of the Policy.
In these circumstances, the Panel considers the Complainant has demonstrated that the Respondent has registered and used the disputed domain name in bad faith as understood under the Policy.
Accordingly, the Complainant has established the third requirement under the Policy.
7. Appropriate RemedyThe Complainant has met all three requirements under the Policy.
Paragraph 4(i) of the Policy states:
“Remedies. The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant (provided that the complainant is otherwise eligible to hold that domain name).”
The Complaint as originally filed requested that the disputed domain name be transferred to the Complainant, Allergan, Inc. When the Complaint was originally filed, the Complaint listed only one Complainant, being Allergan, Inc.
This required review of whether “the complainant is otherwise eligible to hold that domain name”.
The Complainant Allergan, Inc. is a United States corporation and is not registered to do business in Australia.
The .au Domain Administration Rules: Licensing Policy No. 2019-0 (“auDA Rules”), that commenced on April 12, 2021, includes the following under the heading “Eligibility and Allocation Criteria”:
“2.4.1 A Person applying for a licence must:
(1) have an Australian presence; and
(2) satisfy any eligibility and allocation criteria for the namespace being applied for as specified in paragraphs 2.4.3 to 2.4.11.
2.4.2 Where a Person is applying for a licence on behalf of a related body corporate, the related body corporate must satisfy the Australian presence requirement.”
Paragraphs 2.4.4 and 2.4.5 have eligibility and allocation criteria for the “.com.au” and “.net.au” namespaces.
“Australian presence” is defined in the auDA Rules. The Panel’s initial view was that the Complainant does not appear to meet any of the limbs of this definition. One way to establish an “Australian presence” is item (17) of the definition, that states:
“(17) the applicant or owner of an Australian Trade Mark can rely upon that application or registration to establish an Australian presence, but only in respect of a domain name that is an exact match of the words which are the subject of the Australian Trade Mark application or registration.”
However, the disputed domain name contains a misspelling of the Complainant’s BOTOX trade mark and also an additional word. The Complainant does not own any Australian Trade Mark registrations or applications for “hairbottox”.
Accordingly, the Panel issued a Procedural Order on December 3, 2021 concerning the status of the Complainant’s Australian presence.
In response to the Procedural Order, the Complainant made the following submission, in relevant part:
“The Complainant, Allergan, Inc., does not itself have an Australian presence. However, Allergan Australia Pty Ltd ACN 000 612 831 is the authorised user of the BOTOX Marks in Australia and is a related body corporate of Allergan, Inc. Allergan Australia is also the registered sponsor for the BOTOX products listed on the Australian Register of Therapeutic Goods. Allergan Australia Pty Ltd satisfies the eligibility criteria under 2.4.3 by having an Australian presence and being registered in Australia. In the circumstances, we respectfully request that the domain name be transferred to, and licenced by, Allergan Australia Pty Ltd on behalf of the Complainant.”
The Complainant also requested that the Complaint be amended to add Allergan Australia Pty Ltd as co-Complainant.
The Respondent did not respond to the Procedural Order.
Considering the above, the Panel grants the Complainant’s request to add Allergan Australia Pty Ltd as a co‑Complainant. The Panel also finds for purposes of the present transfer order that Allergan Australia Pty Ltd appears to be eligible to hold the disputed domain name; the Panel notes however that the ultimate determination as to registration eligibility rests with the registrar and/or registry.
8. DecisionFor all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name
John Swinson
Sole Panelist
Date: December 11, 2021