The Complainant is Allergan Inc. of Irvine, California, United States of America (“United States”), represented by Rouse Legal, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Steve Feeney of Bromsgrove, Worcestershire, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with D, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2012. On June 8, 2012, the Center transmitted by email to D, Inc. a request for registrar verification in connection with the disputed domain name. On June 9, 2012, D, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2012.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 9, 2012. 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.
Also on July 9, 2012 and following notification to the parties of the appointment of the Panel, the Center received from one “Steve” at “Essential Systems” an email which stated as follows:
“I have spoken to the client and he has agreed to no longer use the domain and is happy to transfer ownership.” 4. Factual Background
The Complainant is the manufacturer of a number of different pharmaceutical and cosmetic products.
Its best selling product is Botox preparation or cream. Botox preparation has been licensed in the United Kingdom (and no doubt many other parts of the world) for some 21 therapeutic and two cosmetic uses. It is also widely used also for the cosmetic reduction of facial lines and wrinkles.
The Complainant has marketed its product for many years under the Botox brand. Its sales under Botox in the United Kingdom and Ireland in 2005 exceeded GBP 7.5 million rising to more than GBP 30.8 million in 2010.
The Complainant has more than 450 registered trademarks around the world for, or based on, BOTOX. These include:
(a) United Kingdom Trade Mark Registration No. 1504721 for BOTOX (word) in respect of goods in class 5, namely pharmaceutical preparations; pharmaceuticals for the treatment of neurological disorders and muscle dystonias; all included in Class 5.
(b) United Kingdom Trade Mark Registration No. 2357789 for the BOTOX (word) in respect of goods in class 3, namely cosmetics; face creams and lotions; skin creams and lotions.
(c) Community Trade Mark Registration No. 1999481 for BOTOX (word) in respect of goods in class 5, namely pharmaceutical preparations for the treatment of neurological disorders, muscle dystonias, smooth muscle disorders, autonomic nerve disorders, headaches, wrinkles, hyperhydrosis, sports injuries, cerebral palsy, spasms, tremors and pain.
(d) Community Trade Mark Registration No. 3700317 for BOTOX (word) in respect of class 3, namely cosmetics; face creams and lotions; skin creams and lotions.
The Respondent registered the disputed domain name on December 1, 2010, well after the Complainant secured the trademark registrations referred to above and well after the Complainant had been using its trademark extensively throughout the United Kingdom.
Shortly before the Complaint was filed, the disputed domain name resolved to a website which offered for sale a product labelled as “Richibrown Organic Natox Cream”. The website described this product as, amongst other things, “‘Natural Botox Cream’, ‘organic botox wrinkle cream’, ‘botox face cream’, and a ‘botox’ alternative’, which ‘works the same as normal botox’.”
The Complainant’s lawyers have written to the Respondent on two occasions once this website came to the Complainant’s attention, but have received no response to either letter. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Respondent has not submitted a formal Response (at least using his full name or the contact details listed in the publicly available WhoIs database). As noted above, however, an email has been received from someone who identified himself as ”Steve” at “Essential Systems” purporting to be on behalf of the Respondent claiming that the Respondent consents to transfer of the disputed domain name to the Complainant. The email came from the address steve@.
Numerous prior UDRP panels have accepted that an order for transfer is appropriate when a respondent consents, either without further inquiry or on a showing of a prima facie case by the complainant in such circumstances. See, e.g. a number of the relevant cases in MasterCard International Incorporated v. Activa, Activa DomainsWIPO Case No. D2009-0496.
This situation is different to the extent that the email referred to above does not use the contact details shown in the publicly available WhoIs database, but purports to be on behalf of a client. The relationship between “Steve” at “Essential Systems” and the Respondent is not otherwise explained.
There are a number or reasons why, in the circumstances of this case, the Panel finds that the Complaint is successful and orders transfer of the disputed domain name to the Complainant.
First, the Complaint has been served on the physical and electronic coordinates specified in the publicly available WhoIs database (and confirmed as correct by the Registrar). Accordingly, the Panel finds that the Complaint has been properly notified to the Respondent. If there had been no further developments, paragraph 14(a) of the Rules requires the Panel, when a Respondent is in default, to decide the Complaint in the absence of exceptional circumstances.
Second, the Panel notes that the domain name resolves to a website for an entity describing itself as “Essential Systems”. The contact details for this entity are in Bromsgrove, Worcestershire in the United Kingdom, the same place as the address for the Respondent shown in the publicly available Whois database which the Registrar has confirmed as correct. The street address, however, is different. The “About” page of the Essential Systems website also states, amongst other things:
“The concept for Essential Systems began over 5 years ago when Steve Feeney started to build the IT systems for Essential Loans.”
Steve Feeney is, of course, the name of the Respondent. A member of the “team” is identified on that page only as “Steve”. If this “Steve” (or the “Steve” at “Essential Systems” who sent the email purporting to consent to transfer of the disputed domain name on behalf of the Respondent) is not the same person as the Respondent, the Respondent appears to be very closely connected with Essential Systems.
Accordingly, the Panel is prepared in the circumstances of this case to proceed on the basis that the email from “Steve” at “Essential Systems” has been sent by the Respondent or, at the least, sent with his authority.
Third, there is a very strong prima facie case (at least) in the Complainant’s favour.
On any view, the disputed domain name is confusingly similar to the Complainant’s proven registered trademarks identified in section 4 above.
The Respondent registered the disputed domain name long after the Complainant registered its trademarks and at a time when the Complainant’s trademark, BOTOX, had achieved very substantial sales in the United Kingdom and so it would be very difficult for the Respondent to contend successfully that he was unaware of the Complainant’s use of and rights in BOTOX. The disputed domain name does not appear to be derived from the Respondent’s name or other activities and, according to the Complainant is not being used by the Respondent with its authority. In these circumstances, the Respondent does not appear to have, and certainly is not claiming, any rights or legitimate interests in or to the disputed domain name.
The use of the Complainant’s trademark as a key and distinctive part of the disputed domain name to attract potential customers for the “Richibrown Organic Natox Cream” product which apparently competes with the Complainant’s own Botox product is not otherwise a legitimate interest under the Policy. Given the extent of use and promotion of the Complainant’s trademark, the nature of the Respondent’s use of the disputed domain name as disclosed by the website for “Richibrown Organic Natox Cream” provides a strong basis for inferring that the disputed domain name was registered in bad faith. Given the manner of its use, this Panel finds it is also being used in bad faith. 6. 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.
Warwick A. Rothnie
Sole Panelist
Dated: July 17, 2012
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