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SC FARMEC S.A. and S.C. SICOMED S.A. v. JN Prade [2005] GENDND 1611 (23 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SC FARMEC S.A. and S.C. SICOMED S.A. v. JN Prade

Case No. D2005-0701

1. The Parties

The Complainants are SC FARMEC S.A., Cluj-Napoca, Romania, and S.C. SICOMED S.A., Bucharest, Romania, represented by Turcu & Turcu, Romania.

The Respondent is JN Prade, Sarasota, Florida, United States of America, represented by Ratza & Ratza, Romania.

2. The Domain Names and Registrar

The disputed domain names <cosmetiquesgerovital.com> and <gerovitalcosmetics.com> are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2005. On July 22, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On July 22, 2005, Go Daddy Software 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, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on July 22, 2005. The Center verified that the Complaint together with the Amended 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 August 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 30, 2005. The Response was filed with the Center on August 29, 2005.

On September 7, 2005, the Center received a Supplemental Filing from the Complainant. On September 7, 2005, the Center also received a Supplemental Filing from the Respondent.

The Center appointed David J.A. Cairns as the sole panelist in this matter on September 12, 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. Factual Background

The Complainants are Romanian companies. The Complainants rely on various trademarks registered in the names of Societatea Comerciala Sicomed S.A., Societatea Comerciala Sicomed S.A. Bucuresti, and Sicomed S.A., including the following Romanian registrations:

(i) Romanian trademark Nº R17834 effective for 10 years from November 25, 2001, and consisting of the trademark GEROVITAL;

(ii) Romanian trademark registration Nº R18585, effective for 10 years from November 25, 2001, for a trademark consisting of the word ‘Gero H3 Aslan’ above ‘Prof. Dr. Ana Aslan’ in smaller signature script all enclosed within a rectangular device;

(iii) Romanian trademark registrations Nº R15551 and Nº 27090, effective for 10 years from May 24, 1999, and February 15, 1995, respectively for a trademark consisting of the word ‘GEROVITAL’ enclosed in a rectangular device beneath which appears in three different scripts ‘PRODUS ORIGINAL Prof. Dr. A. ASLAN’, the signature ‘Prof. Dr. A. Aslan’ and ‘H3’;

(iv) Romanian trademark registration Nº R18557 effective for 10 years from October 18, 2001, consisting of ‘Geroaslan®’ in a rectangular device and then in three different smaller types, and also enclosed within separate regular or circular devices, ‘PRODUS ORIGINAL Prof. Dr. Ana Aslan’, ‘H3’ and the signature ‘Prof Dr. A. Aslan’;

(v) Romanian trademark registration Nº R17828 effective for 10 years from October 18, 2001, for the trademark ‘GEROVITAL’ set above the symbol H3.

(vi) Romanian trademark registrations Nº 55707, 55619, and 55620 all effective for 10 years from April 24, 2003, for the words respectively ‘GEROVITAL BIO’, ‘GEROVITAL PLUS’ and ‘GEROVITAL LIFE’.

The copies of these trademark registrations provided in evidence by the Complainants did not identify the classes of goods to which they relate.

The Complainant SC Farmec S.A. also owns various trademark registrations including the word GEROVITAL. The Complainants also hold various international registrations for the word and/or devices including the word GEROVITAL.

The Respondent markets cosmetics over the Internet. The Panel entered the websites at the disputed domain names on September 22, 2005. The disputed domain name <gerovitalcosmetics.com> was parked with GoDaddy.com. It had various sponsored links to sites selling cosmetics, including GEROVITAL products and products under other trademarks. The disputed domain name <cosmetiquesgerovital.com> is the address of a website that offers for sale in English, French, Italian and Japanese a wide range of products under the GEROVITAL trademark, and also two products under the trademark ELMIPLANT. The home page contains the following disclaimer: “Gerovital H3 is a trademark of GeroVital Cosmetics Bucharest Romania. Gerovital Plant is produced by Farmec SA Cluj Romania.”

A simple search identifies ELMIPLANT to be a trademark of S.C. Elmi Prodfarm S.R.L., another Romanian company offering cosmetics for sale on the Internet (see “www.elmiplant.ro”).

5. Parties’ Contentions

A. The Complainants

The Complainants state that their trademark rights are infringed by the Respondent’s sale of products bearing their trademarks through websites at the disputed domain names.

The Complainants particularly complain of the sale of products bearing the trademark GEROVITAL H3 with a signature facsimile ‘Prof. Dr. Ana Aslan’ which is co-owned by the Complainants.

They state that the disputed domain names are confusingly similar to their trademarks as they contain the significant word GEROVITAL. The Respondent markets products without identifying the true owner of the trademarks and without authorisation from the Complainants, so causing damage to their intellectual property rights and confusion amongst customers.

The Complainants also state that the Respondent has no rights or legitimate interests in the disputed domain name and also that the disputed domain names were registered and are being used in bad faith. The Complainants refer to the confusion likely to be caused by the Respondent’s use of the trademarks and state that the Respondent has attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainants’ trademarks. The Complainants state that they have not licensed or otherwise permitted the Respondent to use its trademarks, nor to apply for or use any domain name incorporating its trademarks; that the Respondent has no rights in the trademark GEROVITAL with a signature facsimile ‘Prof Dr. Ana Aslan’; and that the Respondent seeks to give an appearance of “a connection with products commercialized by the Complainants” and to take advantage of typographical errors by Internet users. They also state that the Respondent is “well known” for cybersquatting. The Complainants seek that the disputed domain names are transferred to them.

The Supplemental Filing of the Complainants sets out various reasons why material submitted by the Respondent did not establish that the Respondent had any legal right to use the trademark GEROVITAL H3 with a facsimile signature ‘Prof. Dr. Ana Aslan’, and questions whether agreements referred to by the Respondent in the Response are still in force.

B. The Respondent

The Respondent accepts that a similarity exists between the disputed domain names and the trademarks in which the Complainants have rights, particularly with those including the word GEROVITAL.

However, the Respondent states that three companies are the co-owners of the trademark GEROVITAL H3 bearing the facsimile signature ‘Prof. Dr. Ann Aslan’, being the two Complainants and a third company called Gerovital Cosmetics S.A., and that accordingly all three companies have rights over the trademark GEROVITAL H3.

The Respondent further asserts that Gerovital Cosmetics S.A. is the legal entity most entitled to claim rights over the disputed domain names.

The Respondent states that the products marketed through the websites associated with the disputed domain names are original products, and that the owners of the trademarks are in fact specified on the websites.

The Respondent also claims that he has legitimate rights or interests in the domain name. He states that he purchases these cosmetics through a Romanian company wholly owned by him called Zalmoxian Products S.R.L., and submits as exhibits sale and purchase contracts for 2005 between Zalmoxian Products S.R.L. and Gerovital Cosmetics S.A. and the Complainant Farmec S.A., and states that as purchaser of products manufactured by Farmec S.A. he is entitled to market the products under the GEROVITAL H3 trademark. He states that as a good faith reseller he has a legitimate interest in registering a domain name identical or similar to the trademark he markets, particularly as the Respondent is offering on his website goods manufactured by the Complainants and Gerovital Cosmetics S.A., purchased from these manufacturers; that he is using the website to market only trademark goods (so there is no ‘bait and switch’ selling of other companies’ products); that the owners of the trademarks are stated on the websites; and that the products are sold in their original packages bearing the name and contact information of the respective producers.

Further, the Respondent states that he has used the disputed domain names to trade cosmetics since 2000, well before the first notification by the Complainants of their complaint in 2004. The Respondent states that he operates in the cosmetics market under the name Gerovital Ltd.

Finally, in respect of rights and legitimate interests the Respondent refers to an agreement between Gerovital Cosmetics S.A. and Zalmoxian Products where Gerovital Cosmetics S.A. as the owner of various GEROVITAL trademarks expressly authorises the Respondent to register the disputed domain names. The relevant clauses of this agreement read:

“Scope of Agreement

Through this Agreement, the prior covenant of the two parties is hereby sanctioned, the respective covenant referring to the registration and use of the domain names: <gerovitalcosmetics.com> and <cosmetiquegerovital.com>.

Rights and Liabilities of the Parties:

- GEROVITAL COSMETICS hereby authorises Mr. Jean Noel Cresta Prade as Sole Shareholder of the Company Zalmocian Products S.R.L. in order to carry out the registration of the domain names: <gerovitalcosmetics.com> and <cosmetiquegerovital.com>.

- all and any expenses incurred for the above-mentioned domain names’ registration, as well as for their maintenance, will be borne by Zalmoxian Products.

- Mr. Jean Noel Cresta Prade will acquire ownership over the domain names mentioned above.

- Except the rights arising from the ownership over the above-mentioned domains, Zalmoxian Products and Mr. Jean Noel Cresta Prade do not acquire, under this Agreement, any intellectual property rights over the GEROVITAL trademark or over the GEROVITAL COSMETICS brand.”

The Respondent also denies that the disputed domain names are being registered and used in bad faith, stating, inter alia, that he has made no effort to sell the disputed domain names, that he holds only two of approximately 30 domain names similar to the Complainants’ trademarks, and that in his use of the disputed domain names there is no consumer deception.

The Respondent also refers to various trademark disputes between Gerovital Cosmetics S.A. and the Complainant Farmec S.A., and that in fact the Complainants in this proceeding are seeking to obtain the domain names identical to that of their biggest competitor.

The Respondent’s Supplemental Response also addresses the question of the ownership of the GEROVITAL H3 trademark with a facsimile signature ‘Prof. Dr. Ana Aslan’; defends the validity of the sale and purchase agreement between Gerovital Cosmetics S.A. and Zalmoxian Products; and states that he does not claim any legal rights to any GEROVITAL trademarks, but only the right to register and use the disputed domain names.

6. Discussion and Findings

A preliminary procedural issue is the admissability of the supplemental filings by each party, for which there is no provision in the Rules. This Panel considers that it has a discretion in this regard, and that it is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions (see Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447). In the present instance the Panel has decided to accept the unsolicited submissions of both the Complainants and the Respondent for the following reasons: (i) both parties have submitted supplementary responses without objection from the other; (ii) the supplementary responses are both short (less than two pages) and deal largely with clarification of the right to GEROVITAL H3 with a facsimile signature ‘Prof. Dr. Ana Aslan’; (iii) there is no introduction of new factual material or legal argument; and (iv) the Panel is satisfied that the acceptance of these supplementary responses is in all respects consistent with its obligation in paragraph 10(b) of the Rules to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

Turning to the merits, the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.

Paragraph 4(a) of the Policy requires the Complainants to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that the Respondent’s domain names have been registered and are being used in bad faith.

A. Whether the Disputed Domain Names are Identical or Confusingly Similar to the Complainant’s Trademarks

The Panel accepts that the Complainants own various trademarks that include GEROVITAL. Many of these trademarks are device marks that incorporate other elements, particularly the facsimile signature of ‘Prof. Dr. Ana Aslan’. However, the Complainants also own a registered trademark for the word GEROVITAL (being Romanian trademark Nº R17834).

The disputed domain names are not identical with these trademarks, but do incorporate this trademark entirely. The fact that a trademark is incorporated in its entirety in a domain name is a solid indication, but does not ipso facto mean, that the domain name is confusingly similar to the trademark. The similarity of the trademark and the domain name depends on many factors, including “the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin” (see Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870). However, this is another case of the addition of a prefix and suffix to a registered trademark descriptive of the products available on the Respondent’s website which, as many UDRP decisions demonstrate, will almost invariably be insufficient to prevent the domain names being confusingly similar to the registered trademark.

The Panel considers that the disputed domain names are confusingly similar to the GEROVITAL trademark for the following reasons: (i) GEROVITAL is an invented word with a high degree of inherent distinctiveness; (ii) ‘cosmetics’ and ‘cosmetiques’ are ordinary descriptive words that describe in English and French respectively the products offered by the Complainant; (iii) the evidence demonstrates that the GEROVITAL trademark has an established reputation in respect of medicines and cosmetics; (iv) potential customers will assume that the disputed domain names are associated with the Complainants’ trademark.

The arguments raised by the Respondent under this heading relating to the ownership situation of the GEROVITAL trademark with the facsimile signature ‘Prof Dr. Ana Aslan’, the identification of another company (Gerovital Cosmetics S.A.) that might possess legal rights in the disputed domain name, and the fact that only genuine products that are sold on the website are irrelevant to the first element under the Policy. The Complainants have proved that they own a registered trademark for GEROVITAL and that the disputed domain names are confusingly similar to this registered trademark, and so the first element of the Policy is satisfied.

B. Whether the Respondent has no Rights or Legitimate Interests in respect of the Domain Names

Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the domain names. The first of these circumstances (paragraph 4(c)(i)) is that “before any notice to you [i.e., the Respondent] 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.” The Respondent states and the Panel accepts that the disputed domain name has been used for the sale of cosmetics since 2000, and that the first notification of the dispute was 2004.

The Respondent asserts that it is an authorised reseller of the Complainants’ products; that it acquires GEROVITAL products directly from the Complainants and a company called Gerovital Cosmetics S.A.; that it uses the website to sell only the trademarked goods (so there is no ‘bait and switch’ offering of competitors’ products); that the site accurately discloses its relationship with the trademark owner and does not falsely suggest it is the trademark owner; and that the Respondent has only registered two domain names and made no effort to corner domain names including the GEROVITAL trademarks, and therefore satisfies all the criteria for the bona fide offering of goods or services set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

However, the facts of this dispute are not exactly as the Respondent represents. It is true that the Respondent has not at any time falsely claimed to be the trademark owner. The Respondent’s operative website includes the statement relating to trademark ownership referred to above, but this is not a full disclosure, and specifically does not acknowledge that the Complainants own relevant trademarks. Further, the disputed domain names are used to offer for sale goods other than the trademarked goods because the disputed domain name <gerovitalcosmetics.com> parked with GoDaddy.com has sponsored links to sites offering products under other trademarks, and the disputed domain name <cosmetiquesgerovital.com> offers two products under the trademark ELMIPLANT. The Respondent’s actual use of the disputed domain names does not satisfy the test for bona fide offering of goods proposed by the Respondent himself.

However, this is not the end of the matter. The Respondent offers for sale products under the GEROVITAL trademark manufactured by a company called Gerovital Cosmetics S.A. The evidence demonstrates that Gerovital Cosmetics S.A. is the owner of registered trademarks including the word GEROVITAL. The disputed domain name <gerovitalcosmetics.com> incorporates the complete name of Gerovital Cosmetics S.A. The Complainants in their Amended Complaint and in their Supplemental Filing acknowledge that Gerovital Cosmetics S.A. has certain rights in the GEROVITAL trademarks, although it disputes the scope of those rights, particularly in respect of the use of the facsimile signature ‘Prof. Dr. Ana Aslan’.

The Respondent has produced an agreement executed by Gerovital Cosmetics S.A. expressly authorising the Respondent to register the disputed domain names. This agreement is undated and may post-date the actual registration of the disputed domain names, but the Panel accepts that Gerovital Cosmetics S.A. approves and has authorised the Respondent’s registration of the disputed domain names. It has also produced a sale and purchase agreement dated April 8, 2005, executed by Gerovital Cosmetics S.A. authorising the Respondent’s company to use Gerovital Cosmetics S.A.’s brands during the period of the agreement.

The Panel concludes that Gerovital Cosmetics S.A. has legitimate rights in the GEROVITAL trademark, and also in its own name, and that it has authorised the Respondent to register the disputed domain names. It is not a party to these proceedings. The Respondent claims to derive its rights and legitimate interests from Gerovital Cosmetics S.A. Notwithstanding concerns about some aspects of the Respondent’s conduct (particularly the offering for sale of products other than GEROVITAL products on its websites, and representing to the Panel that it was not doing so) the Panel in not convinced that the Respondent has “no rights or legitimate interests” in respect of the disputed domain names, which is the standard required by the Policy. To the contrary, the Respondent has shown that it has contractual rights to the disputed domain names granted by a party (Gerovital Cosmetics S.A) that prima facie can grant such rights.

Accordingly, the Panel finds that it has not been demonstrated by the Complainants that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

As a final point, the Panel notes that this Complaint is part of a wider trademark dispute involving the parties and Gerovital Cosmetics S.A. There is a complex range of trademarks related to GEROVITAL products, and agreements relating to the use of particular trademarks and their use in respect of different products such as cosmetics and medicines. It is significant that there has been considerable argument by the Parties as to the rights to the GEROVITAL trademark with the facsimile signature of ‘Prof. Dr.Ana Aslan’. This might indeed be a highly important legal and commercial question for the Parties, but the nature and the legitimacy of the Respondent’s use of this device cannot be determined in these proceedings.

The Policy and Rules are designed to resolve questions of cybersquatting and not competing claims between trademark owners or registered users, which must be determined in other forums.

C. Whether the Respondent has Registered and is Using the Disputed Domain Names in Bad Faith

In light of its decision on the second element of the Policy, the Panel is not required to address this element.

7. Decision

For all the foregoing reasons, the Complaint is denied.

David J.A. Cairns
Sole Panelist

Date: September 23, 2005