Home | Databases | WorldLII | Search | Feedback Generic Top Level Domain Name (gTLD) Decisions

Wellquest International, Inc. v. Nicholas Clark [2005] GENDND 1291 (19 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wellquest International, Inc. v. Nicholas Clark

Case No. D2005-0552

1. Parties

The Complainant is Wellquest International, Inc.(“Wellquest”), a New York corporation with its principal place of business in New York, United States of America. Complainant is represented by Angelo Notaro of Notaro & Michalos, P.C., United States of America.

The Respondent is Nicholas Clark of New Jersey, United States of America.

2. Registrar and Disputed Domain Name

The domain name at issue is <bloussantadvanced.com> (the “Domain Name”). The domain name is registered with Go Daddy Software, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2005. On May 26, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 26, 2005, 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 for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2005.

The Center appointed David H. Bernstein as the Sole Panelist in this matter on July 5, 2005. 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. Relief Sought

Complainant requests that the Domain Name <bloussantadvanced.com> be transferred from Respondent to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has valid trademark rights in the “BLOUSSANT” mark (the “Mark”) by virtue of its trademark registrations in the United States of America, the European Community, Canada, Mexico, China and Republic of Korea. Additionally, Complainant describes substantial amounts of “time and effort, as well as money, in advertising and promoting the BLOUSSANT mark”. Through magazine and other print advertisements, television infomercials, and sales of its “Bloussant” breast enhancement product, and by virtue of its gross revenues that now exceed $80 million annually, Complainant’s trademark has become known and identified with Complainant’s “Bloussant” brand of breast enhancement supplements.

Complainant alleges that it has protected its interests in the Mark through the sending of cease and desist letters and through civil actions, and that it has been awarded injunctions against previous infringers. Complainant registered the domain name <bloussant.com> to be used in conjunction with its product. Upon discovery of Respondent’s website, Complainant attempted to send by both mail and fax a cease and desist letter. Neither attempt was successful, as the letter was returned as “Refused”, and the fax number was not operative.

Complainant avers that Respondent has no rights or legitimate interests in respect of the Domain Name. That Domain Name resolves to a website at which Respondent sells its own breast enhancement products, which creates a likelihood of confusion between Complainant’s products and the Respondent’s goods. In fact, Complainant contends that Respondent’s website “promotes unauthorized competition and counterfeit herbal supplements for breast enhancement” under the name “Bloussant Advanced”.

Finally, Complainant asserts that the Domain Name was registered and is being used in bad faith. The Domain Name incorporates Complainant’s mark in its entirety, and Respondent owns no trademark rights in the mark BLOUSSANT or any similar mark. Complainant did not consent to, license, or otherwise authorize Respondent to use or register the disputed domain name. Respondent registered the Domain Name after Complainant’s mark had acquired sufficient goodwill and brand recognition, with the intent of causing and thereafter profiting from potential customers’ confusion.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion

In order to succeed in its claim, Complainant must demonstrate that all of the following elements in Paragraph 4(a) of the Policy have been satisfied:

1. the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2. Respondent has no rights or legitimate interests with respect to the Domain Name; and

3. the Domain Name has been registered and is being used in bad faith.

The Complainant must carry its burden of proof by a preponderance of evidence. Bootie Brewing Company v. Ward and Grabebootie Inc., WIPO Case No. D2003-0185 (May 28, 2003).

A. Identical and/or Confusingly Similar

In light of Respondent’s default, the Panel accepts as true all of the factual allegations made in the Complaint. Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (February 29, 2000). Those facts include the averments that Complainant owns trademark rights in the BLOUSSANT mark and acquired those rights before Respondent’s registration of the Domain Name. That conclusion is supported by appropriate factual allegations concerning Complainant’s ownership of valid trademark registrations and its use of the mark in commerce in ways that create trademark rights.

Complainant also has proven that the Domain Name is confusingly similar to Complainant’s mark. The Domain Name incorporates Complainant’s mark in its entirety, and merely adds a generic word to Complainant’s unique, invented word. The wholesale incorporation of Complainant’s trademark in the Domain Name is itself sufficient to prove confusing similarity, for the purposes of the Policy. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March 24, 2000).

B. Rights or Legitimate Interests

From Respondent’s website, the Panel cannot ascertain whether Respondent is selling Complainant’s product or counterfeit versions of Complainant’s product. Respondent’s default in these proceedings, coupled with the reference to “counterfeit” products in the Complaint, supports the inference that Respondent is selling counterfeit items. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions § 4.6 (available at http://arbiter.wipo.int/domains/search/overview/index.html#46) (panel may draw negative inferences in absence of a response).¹ There can be no legitimate interest in the sale of counterfeits, and thus Complainant has satisfied its burden of showing that Respondent lacks rights or legitimate interests in the Domain Name. Lily ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750 (November 8, 2004) (citing Rules, Paragraph 14(b) and related cases).

C. Bad Faith

Respondent’s sale of counterfeit goods on a website accessible through the Domain Name is paradigmatic bad faith. Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019 (January 27, 2005). This conduct supports the inference that Respondent registered this Domain Name with the bad faith intent to deceive consumers with its counterfeit products, and that it intentionally has used the Domain Name to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and products. Policy 4(b)(iv). See also Schouten Industries B.V. v. Canadian Soylife Health Co. Ltd., NAF Claim No. FA149188 (July 19, 2003) (finding bad faith in trademark infringement).

Courts, too, have severely punished counterfeiters who ply their wears on the Internet using deceptive domain names.² The sale of such counterfeits via the Internet, where the goods cannot fully be examined by purchasers prior to shipment, makes consumer confusion virtually inevitable. See Louis Vuitton Malletier v. Veit, 211 F.Supp.2d 567 (E.D.Pa. 2002).

8. Decision

For 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, <bloussantadvanced.com> be transferred to the Complainant.

David H. Bernstein
Sole Panelist

Dated: July 19, 2005

1 On the relevance of citations to the WIPO Overview of WIPO Panel Views on Select UDRP Questions, see generally Fresh Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO Case No. D2005-0061 at N.3 (March 21, 2005).

2 Because both parties are American citizens, it is fully appropriate to rely upon and apply American legal principles and precedents in evaluating the parties rights.