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SkinMedica, Inc. v. C.C.C. [2005] GENDND 1303 (15 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SkinMedica, Inc. v. C.C.C.

Case No. D2005-0545

1. The Parties

The Complainant is SkinMedica, Inc., Carlsbad, California, United States of America, represented by Latham & Watkins, United States of America.

The Respondent is C.C.C., Auckland, New Zealand.

2. The Domain Name and Registrar

The disputed domain name <vaniqa.net> (“Domain Name”) is registered with Bizcn.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2005. On May 23, 2005, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the Domain Name at issue. On May 24, 2005, Bizcn.com, Inc. 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 registrant and the administrative, billing, and technical contact (Kevin Lyan). 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 May 30, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2005.

The Center appointed Jon Lang as the Sole Panelist in this matter on June 29, 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.

Procedural Matters

Paragraph 11 of the Rules, “Language of Proceedings” provides that unless otherwise agreed by the parties or specified otherwise in the registration agreement, the language of the administrative proceeding should be the language of the registration agreement subject to the authority of the Panel to determine otherwise. In its registrar verification, Bizcn.com, Inc. confirmed that the registration agreement in relation to the disputed domain name is in English. The language of the proceedings shall therefore be English.

4. Factual Background

On March 12, 2002, the Complainant registered the word mark VANIQA with the United States Patent and Trademark Office (registration number 2546144). The goods and services associated with the registered mark are pharmaceutical preparations, namely preparations for the treatment of hirsutism and preparations to retard hair growth.

On March 3, 2005, the Respondent registered the Domain Name with Bizcn.com Inc. The website to which the Domain Name resolves contains hyperlinks to distributors of Vaniqa itself as well as to a number of unaffiliated laser hair removal businesses, in other words consumer products that directly compete with the Complainant’s products. There are other links as well for commercial services in the areas of dietary, weight loss, sleep and fitness.

Prior to the filing of the Complaint, the Complainant sent a “cease and desist” letter to the Respondent, but the letter was returned “undeliverable”. The Complainant’s Counsel attempted to call the Respondent, leaving a message with an automated answering service, but no one responded. No response was received to an e-mail sent by the Complainant’s Counsel or to correspondence sent by the Center.

5. Parties’ Contentions

A. Complainant

The Complainant submits that their registered trademark satisfies the threshold requirement of having trademark rights for the purposes of the Policy. It says that the Complainant’s registered mark and Domain Name are identical other than the “.net” and that a potential purchaser of the Complainant’s products who goes to the website at the Domain Name will be redirected to products not associated with the Complainant, including products that directly compete with those of the Complainant, and therefore the Domain Name is confusingly similar to its registered mark.

The Complainant submits that the Respondent is not commonly known by the Domain Name but nevertheless uses the trademark of the Complainant. The Complainant has not transferred or licensed any rights with respect to its trademark to the Respondent who is making commercial use of the Domain Name by re-directing potential customers of the Complainant’s products identified by the trademark. The Domain Name does not appear to be used in connection with a bona fide offering of goods – the website to which the Domain Name resolves contains hyperlinks which redirect users to other websites where they can choose to click on yet further links which take them to offerings of products other than those of the Complainant. Thus, the Respondent appears to be using the Domain Name merely to direct users to a website which then re-directs the users to other websites not legitimately associated with the registered mark or the Complainant.

By using the Domain Name in the way that it does, the Complainant submits that the Respondent is misleadingly diverting customers to competitors and also to unrelated services, thus tarnishing its registered trademark. The Complainant submits that the Respondent will not be able to demonstrate that the Domain Name is used for a bona fide offering of goods or services (because it is merely a website redirecting Internet traffic to other websites not legitimately associated with the registered mark of the Complainant). It also submits that the Respondent cannot be making a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain. On the contrary, the Respondent submits that the Complainant is indeed using the Domain Name for commercial gain. The Complainant submits that it has made out a prima facie case that the Respondent lacks rights to or a legitimate interest in the Domain Name and therefore the burden transfers to the Respondent to demonstrate such rights or legitimate interests. The Complainant suggests that the Respondent is unable to meet this burden.

The Complainant submits that there is evidence to show that the Domain Name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the Domain Name registration to the owner of the registered mark or to a competitor. The Complainant says that given that the Domain Name was registered after the Complainant’s registered mark, it is plain that the Respondent was hoping to sell the site to the Complainant or a competitor and profit from the sale. The Complainant also submits that the Domain Name was registered in order to prevent it, the owner of the registered mark, reflecting its mark in a corresponding domain name.

Moreover, the Complainant submits that by using the Domain Name in the way that it is, the Respondent has intentionally attempted to attract Internet users to the Respondent’s website or other online location for commercial gain by creating a likelihood of confusion with the Complainant’s registered mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s portal website and the linked websites or products and services on the Respondent’s website and linked websites. The Complainant suggests that it is a reasonable inference that the Domain Name was registered primarily for the purpose of disrupting the business of the Complainant.

The Complainant also refers to its own website at “www.vaniqa.com” in which it gives advice about Vaniqa and how to purchase the product. The Complainant says that Internet users wishing to purchase the Complainant’s product may be transferred to the Respondent’s website through the Domain Name. Once there, they would see links to other hair removal products and may well explore those in the mistaken belief that they are associated with the Complainant’s registered mark and the product, whereas, in truth, the links on the website associated with the Domain Name do not link to any website associated with the Complainant’s registered mark or any products legitimately associated with the Complainant.

B. Respondent

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

6. Discussion and Findings

The Complainant must show, for the purposes of paragraph 4(a) of the Policy, that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that the Respondent has no rights to or legitimate interests in the Domain Name; and that it was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has satisfied the threshold requirement of having trademark rights. The location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark (Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503, Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358, Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661).

It is equally clear that the Domain Name is identical to the registered trademark of the Complainant, given that a panel should disregard the suffix “.net” when it comes to comparing a trademark and domain name.

The Panel finds that the first element of the Policy has been established.

B. Rights or Legitimate Interests

There is no evidence to suggest that the Respondent is known by the Domain Name or that it is using the Domain Name in connection with a bona fide offering of goods or services. Were the Respondent able to demonstrate that, prior to notice of the dispute with the Complainant, it had made use of or had prepared to make use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services, or that it had been commonly known by the Domain Name, then that would constitute evidence of rights to or legitimate interests in the Domain Name. However, the website associated with the Domain Name contains a series of hyperlinks redirecting Internet users to third parties who offer their own products which may or may not be similar to those provided by the Complainant. The website to which the Domain Name resolves appears therefore to be merely a website redirecting Internet traffic to other websites not legitimately associated with the Complainant or its registered trademark.

The majority view that has emerged from past UDRP panel decisions is that a re-seller can be held to be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if it satisfies certain requirements. These include the actual offering of goods and services, the use of the site to sell only the trademarked goods and that the site accurately discloses the registrant’s relationship with the trademark owner. None of these requirements are present here. The Respondent’s website at the Domain Name contains links to distributors of Vaniqa as well as to other unaffiliated laser hair removal businesses. The Complainant has succeeded in making out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The burden of demonstrating that such rights or legitimate interests do in fact exist therefore now falls on the Respondent but the Respondent has failed to take part in these proceedings and has failed to establish rights or legitimate interests in the Domain Name.

Finally, the appearance of the website associated with the Domain Name (e.g. the several hyperlinks) and the advertisement on the home page stating “the Domain Name Vaniqa.net may be for sale by its owner!”, further suggest that there is no legitimate non-commercial or fair use of the Domain Name.

In all the circumstances, this Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Complainant submits that there is evidence showing that the Domain Name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the Domain Name registration to the Complainant or to a competitor for valuable consideration in excess of out of pocket expenses. Such circumstances are an example of bad faith registration and use described in paragraph 4(b) of the Policy. Whilst there is no evidence that either the Complainant or its competitors have been approached by the Respondent, this Panel notes that the advertisement earlier referred to (“Domain Name Vaniqa.net may be for sale by owner!”) contains a link, “More details …” which goes to a page headed “Vaniqa.net is for sale”.

The Complainant also submits that the Domain Name was registered in order to prevent the owner of the registered trademark from reflecting the trademark in a corresponding domain name. This mirrors in part another set of circumstances described in paragraph 4(b) of the Policy as evidence of bad faith registration and use. However, this particular set of circumstances requires that the Respondent has engaged in a ‘pattern of such conduct’. There is no evidence of past conduct similar to the conduct now complained of and therefore the Panel is unable to make a finding in favor of the Complainant in relation to this submission.

The Complainant also argues that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s portal website and the linked websites. Moreover, the Complainant also submits that there is a reasonable inference from the evidence that the Domain Name was registered primarily for the purpose of disrupting the business of the Complainant. Both submissions are based on further sets of circumstances described in paragraph 4(b) of the Policy as evidencing bad faith registration and use.

The Complainant refers to two past decisions of panels (Parfumerie Douglas GmbH v. Keyword Traffic, WIPO Case No. D2005-0001 and Coilhouse Pneumatics, Inc. d/b/a Freelin-Wade Company v. Don Jones, WIPO Case No. D2005-0006) where registration and use of bad faith was found, it is suggested, in very similar circumstances.

This Panel accepts the Complainant’s submissions in relation to the Respondent’s attempts to attract Internet users to its site. Given that the Domain Name and the registered mark are identical, it does appear to be the case that the Respondent has attracted for commercial gain users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and linked websites. Accordingly, this Panel finds that the Domain Name was registered and is being used in bad faith by the Respondent.

7. 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 <vaniqa.net>, be transferred to the Complainant.

Jon Lang
Sole Panelist

Dated: July 15, 2005