WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Galderma SA v. Clobex
Case No. D2002-0224
1. The Parties
Complainant is Galderma SA Geneva, Switzerland ("Complainant").
Respondent(s) are Clobex, Nicosia, Cyprus and Clobex, New York, New York, United States of America ("Respondent").
2. The Domain Names and Registrars
The domain names at issue are <clobex.com>, <clobex.net> and <clobex.org>.
The Registrars are Network Solutions, Inc. ("NSI") for <clobex.com> and Intercosmos Media Group for <clobex.net> and <clobex.org>.
3. Procedural History
A Complaint was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 7, 2002, with a hard copy following on March 12, 2002. The WIPO Center sent an Acknowledgement of Receipt of Complaint to the Complainant on March 15, 2002.
On March 15, 2002, a Request for Registrar Verification was transmitted to the Registrar indicated in the Complaint (NSI), and on March 18, 2002, the Registrar confirmed that it was in receipt of the Complaint and that it was the Registrar as far as one of the domain names were concerned. The Registrar forwarded the requested WHOIS details. NSI at the same time informed the WIPO Center that the two other domain names were registered with Intercosmos Media Group.
The WIPO Center informed the Complainant of this and required the Complaint to be amended. Complainant amended the Complaint accordingly and on March 20, 2002, the WIPO Center sent a Request for Registrar Verification to the other registrar who on the same day confirmed that it was in receipt of the Complaint and that it was the Registrar of the domain names. The Registrar forwarded the requested WHOIS details on March 20, 28, 2002.
A Formal Requirements Compliance Checklist was completed by the WIPO Center and the Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), as approved by ICANN on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the WIPO Supplemental Rules"), in effect as of December 1, 1999. The Complainant paid on time and in the required amount the fees for a single member Panel.
On March 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent by the required means, setting a deadline of April 17, 2002, by which the Respondent could file a Response to the Complaint.
On April 19, 2002, having received no Response, the WIPO Center sent a Notification of Respondent Default to the Parties.
The WIPO Center then invited Mr. Knud Wallberg to serve as Panelist in the case, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received the Statement of Acceptance and Declaration of Impartiality and Independence from Mr. Knud Wallberg, the WIPO Center transmitted on May 7, 2002, to the parties a Notification of Appointment of Administrative Panel and the Projected Decision Date.
The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
The Administrative Panel has thus issued its Decision based on the Complaint, the Policy, the Rules, and the WIPO Supplemental Rules but without the benefit of a Response from the Respondent.
4. Factual Background
Complainant's business and trademarks
The Complainant is a pharmaceutical company active in the field of dermatology. The Complainant’s business is to develop and commercialize a range of pharmaceuticals for the treatment of dermatological diseases such as acne, rosacea or psoriasis.
Where authorized by the local health authorities, the Complainant has engaged, through its local subsidiaries, efforts to set up Direct To Consumer (DTC) advertising strategies in order to promote the products and inform the patients on their respective pathologies. The Internet has become a key element for the Complainant's DTC promotional activities, namely through its product web sites. Each product web site is primarily identified by the domain name corresponding to the product's registered trademark, for example, the web site at <metrogel.com> for the METROGEL topical treatment of rosacea and the web site at <differin.com> for the acne treatment DIFFERIN in the United States of America. Printouts of such product web sites were annexed to the Complaint.
The mark CLOBEX, in some instances also spelled CLOB-X, has been chosen to be used in connection with a treatment of psoriasis. CLOBEX products are delivered in form of lotion or in form of shampoo. Commercialization has already started in South American countries as shown in Annex 5 to the Complaint.
The Complainant detains rights on the mark CLOBEX or CLOB-X in over 80 jurisdictions worldwide. The mark CLOBEX has been applied for products of the international classes 3 and 5.
The first applications of the mark CLOBEX made by the Complainant were performed in early 1994 in several Latin American countries, i.e. Bolivia, Peru and Argentina. Copies of the certificates of registration issued in these countries were attached to the Complaint.
The Complainant extended its trademark protections to other parts of the world, and obtained in particular an international registration in September 1998. The products covered by this registration are the following:
class 3 : « medical shampoos »
class 5 : « pharmaceutical, dermatological and hygienic products for the skin and the scalp; medical preparations for the skin ; medical preparations for the scalp».
The Complainant continues to gradually extend the trademark protections of CLOBEX in the territories representing a business interest and wishes to explore the possibility of setting up a product web site dedicated to CLOBEX products identified by the domain name <clobex.com>.
Background of the dispute
During the year 2001, exploring the possibilities of setting up DTC promotional activities for its product CLOBEX, the Complainant discovered the Respondent’s website, to which the domain name <clobex.com> resolved. This site contained adult material, namely banners linking to pornographic websites. These banners were the web site at <lolitacash.com> and <beastcash.com>. The homepage of the web site at <lolitacash.com> was enclosed as an annex to the Complaint.
Complainant performed « Whois » searches in order to identify the registrant of the domain name <clobex.com>. The Whois database of the Registrar did not contain any clear information on the identity of the registrant: a "Clobex" entity with an address in Nicosia, Cyprus, and a administrator’s reference limited to the e-mail <email@example.com> together with a postal address. The domain name had been registered on February 22, 2000.
Complainant found out that on the same date, Respondent had registered the domain name <lolitavirgins.com>.
Complainant further discovered that Respondent had registered the domain names <clobex.net> and <clobex.org> on March 21, 2001. These domain names did not, at the time Complainant found them, lead to an active web page. The address of Respondent as indicated in the Registrar’s Whois database was not the same as the one indicated in relation to the domain name <clobex.com> but the e-mail address of the administrative contact was identical, i.e. <firstname.lastname@example.org>. In addition the number at the end of the contact details was identical to the fax number mentioned in the details concerning <clobex.com>.
On January 29, 2002, the Complainant contacted the Respondent per e-mail at <email@example.com> in order to put the Respondent on notice that Complainant had exclusive trademark rights on the word CLOBEX and to request the transfer of the domain name.
On January 30, 2002, the Complainant received an e-mail in reply from <firstname.lastname@example.org>. The Respondent contented that its company was holding a registration for the trademark CLOBEX « in its country » (without indicating which one), and contested that the domain name led to pornographic contents. Respondent moreover proposed to sell the domain name for a value of USD 100.000. The answer did not contain any identifier, except the signature « David ».
On January 31, 2002, the Complainant received the results of an identical trademark screening search for CLOBEX in the classes 1-42 confirming that no application containing the word CLOBEX had been filed by another entity than Complainant anywhere in the world, but for a Bangladesh pharmaceutical company. The application filed by this Bangladesh company was published in 1989, i.e. before the age of Internet. This seems to indicate that this company has no connection whatsoever with Respondent.
The Respondent has not furnished the Panel with any detailed information on their activities, apart from the information in an e-mail to Complainant that they are a webhosting company. Some of the information below has thus been provided by the Complainant and indicates that Respondent holds a lot of different domain names and corresponding web sites with pornographic content.
5. Parties’ Contentions
The three domain names at issue seem to be registered in the name of the same entity, i.e. Clobex. The contact details available for each domain name are however different, insofar as the address for Clobex is in Cyprus in the Whois information concerning <clobex.com> and in New York in the Whois details concerning <clobex.net > and <clobex.org>.
There are many elements showing that the addresses in Cyprus and New York are fictitious. First, Complainant’s counsel in Cyprus conducted a search in the directory and confirmed that there is no street named « Comstock ave » in Nicosia. The postal code contains five digits, whereas the postal code of other cities of Cyprus contains only four.
The number 13210 is a sequence that seems to be invented. The New York address is also unlikely. The postal code in particular does not correspond to usual New York codes.
On the other hands, the e-mail address of the administrative contact in all three domain names is the same (<email@example.com>). This address is not fictitious, since Complainant received a response when it sent an e-mail using such address. The person who replied was obviously in a position to control the domain names since as soon as Complainant wrote to Respondent, the domain name <clobex.com> resolved to a blank page. The fax (or phone) number is also identical for all three domain names. The country code is however missing.
In view of the above, it is obvious that the addresses mentioned above are totally fictitious, and do not correspond to any real office or place of business. On the contrary, it is clear that all three domain names are controlled by the same owner, hiding behind false addresses.
In such circumstances, it is justified to allow Complainant to file only one complaint against Clobex for all three domain names. Otherwise, Complainant would have to pay twice the filing fees, when in reality there is only one adverse party.
The domain names are identical to trademarks to which Complainant has rights
The Complainant owns several registrations for the word mark CLOBEX in relation to shampoos and pharmaceutical products.
Copies of the certificates of registration for Complainant’s international registration and for the trademarks registered in Peru, Bolivia and Argentina are submitted with this Complaint. All these registrations are currently in force.
It follows that Complainant has rights to the trademark CLOBEX.
The contested domain names are identical to the trademark CLOBEX. The top level domain names .com, .net and .org do not play any role in this respect.
Consequently, the domain names are identical to a trademark to which Complainant has rights. The condition of paragraph 4(a)(i) of the Rules is therefore satisfied.
The Respondent has no rights or legitimate interests in respect of the domain names
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks. Neither is Respondent an authorized retailer of Complainant’s products.
In its e-mail of January 30, 2002, Respondent alleged: « We hold the trademark in our country ». However, the worldwide trademark search ordered by Complainant from Compu-Mark and effected on January 31, 2002, did not reveal any trademark application for « CLOBEX » or a phonetic equivalent filed by another entity than Galderma, save for one application by Bexmico Pharmaceuticals in Bangladesh (which appears totally unrelated to Respondent). It appears thus that Respondent’s assertion that it holds a trademark registration is untrue.
Respondent does not allege in this e-mail that it is making any use (commercial or otherwise) of the domain name <clobex.com>. It simply states that it is a webhosting company and that the domain name <clobex.com> resolves to a « clean » page.
The Respondent registered the domain names under the name Clobex. However, Complainant has no doubt that there is no entity named Clobex, and that the registrant’s name was simply chosen to reflect the domain name. Thus, Respondent could not possibly contend that it is known by the name Clobex, unless it proves the existence of a real Clobex entity having a real place of business.
Before the domain name resolved to a blank page, it led to a page with links to pedophile and pornographic web sites. Complainant did not think of printing the web page to which <clobex.com> resolved. However, this fact is evidenced by the technical report showing an inactive redirection towards the pedophile portal <potop.net>, also registered in the name of Respondent. It is also evidenced by the fact that Respondent owns other domain names related to pornography, such as <lotitavirgins.com>. It must be observed here that the domain name <bannerz.clobex.com> leads to a web page with the address « http ://stx.banners.sextracker.com/fci/DONT_REMOVE/st_adult_1.jpg » depicting half an image of a couple with the text « Couples having sex / hardcore / anal / lesbians / teens ».
The interest that Respondent may have in the domain name is therefore all but legitimate, since it was using it in relation to pornographic and even pedophile and therefore illegal web sites.
Finally, as far as the domain names <clobex.net> and <clobex.org> are concerned, they do not appear to be in use. No legitimate interests of Respondent can be found in relation to such domain names.
Consequently, the Respondent has no rights or legitimate interests in respect of the domain names. The condition of paragraph 4(a)(ii) is therefore satisfied.
The domain names were registered and used in bad faith
Paragraph 4(b) of the Policy enumerates four examples of circumstances which shall be evidence of registration and use of the domain name in bad faith. This list is not exhaustive, and other circumstances may warrant a finding that a domain name was registered and used in bad faith. In the present case, numerous circumstances - set forth below - lead to the conclusion that Respondent acted in bad faith.
The word CLOBEX is an arbitrary term
The name CLOBEX is an arbitrary term coined by Complainant. As far as Complainant knows, it does not have any particular meaning in English or in another language. When Respondent registered the domain names at issue, the trademark CLOBEX was already registered in a number of trademark registries around the world in the name of Complainant. It is hardly likely that Respondent chose this name by coincidence. Complainant therefore assumes that Respondent knew that this term corresponded to a registered trademark when it registered the contested domain names.
Respondent took active measures to conceal its identity
Respondent is clearly hiding behind false contact details, rendering identification impossible. In all the contact details listed in relation to the three domain names at issue, there is not one single name, which could possibly be the name of a real person. The administrative contact for <clobex.com> is described as « Administrator, Domain » and « Maklid », where normally there should be a first name and family name. The e-mail address is as anonymous (<firstname.lastname@example.org>). The name of the street Comstock ave does not exist in Cyprus (see above) and is clearly fantasist. Similarly, the contact for the domain names <clobex.org> and <clobex.net> is « Master, Host », with the same e-mail address <email@example.com>, without mention of any real name.
When contacted by Complainant, Respondent was careful not to mention any name of city or country (in relation to its assertion that it held a trademark registration) which could help locating it. It also signed its e-mail with the common first name « David ».
Respondent’s deliberate intention to dissimulate its true identity is prima facie evidence of registration and use of the domain names in bad faith.
Respondent lied about its rights to the name CLOBEX
Respondent stated in its e-mail of January 30, 2002, to Complainant: « we hold the trademark [Clobex] in our country ».
In order to verify this vague assertion, Complainant had a worldwide trademark search executed by the world leader Compu-Mark. The search covers all trademarks published since 1976, in all countries of the world. All the trademarks revealed by the search but one were registered by Complainant. Thus, Respondent made an outright lie when it said that it « held the trademark ». This lie had obviously the purpose of justifying the very high price requested for the domain name. This tentative to deceive Complainant is clearly a circumstance of using the domain name in bad faith.
Respondent tried to sell the domain name <clobex.com> to Complainant for an amount well in excess of its out-of-pocket expenses
When Complainant sent an email to Respondent requesting the transfer of the domain name, Respondent offered by return e-mail to sell the domain name <clobex.com> to Respondent for the sum of US$ 100.000.
The amount of US$ 100.000 is hugely in excess of Respondent’s expenses in relation to the domain name. This quote, as well as Respondent’s readiness to sell the domain name when no offer to buy it had been made by Complainant, shows that Respondent was awaiting to be contacted by Complainant. This in turn is evidence that Respondent registered the domain name primarily for selling it to Complainant or a competitor for a big profit, which constitutes registration and use in bad faith according to paragraph 4(b)(i) of the Policy.
The domain name <clobex.com> was used in connection with pornographic and pedophile web sites
Before Respondent took measures to direct the domain name <clobex.com > to an empty page, it was using it in connection with a web site advertising pornographic web sites. Complainant saw the banner linking to the web site <www.lolitacash.com> when it first visited the clobex.com web site. Moreover, this use is evidenced by the now inactive redirection to the web site <www.potop.net>, which contains a large number of links towards sites whose names show that they have pedophile contents.
The homepage of <www.potop.net> (a domain name also held by Respondent, see above) declares that users must promise not to promote « child porn ». However, the homepage of <www.elite-sex.com>, the first site on the list available on the potop.net portal, declares « All our girls are 10-15 years old » and features images of hard pornography. Moreover, a majority of the names of the web sites listed in the potop portal suggest pedophile content:
Thus, the domain name <clobex.com> was used in relation to content that is not only morally questionable (as adult pornography), but prohibited by law as involving the abuse of children. This in itself is use of a domain name in bad faith.
The fact that since January 30, 2002, the domain name <clobex.com> leads to a blank page is irrelevant in this respect. It is indeed not necessary that use in bad faith still exist at the time of the filing of the complaint. According to the Panelist in Ingersoll-Rand Co v. Frank Gully d/b/a Advcorem, WIPO Case No. D2000-0021, « if at any time following the registration the name is used in bad faith, the fact of bad faith use is established. Thus, the fact that upon remonstrance by Complainant’s counsel, Respondent(s) ceased using the domain names at issue as links to pornographic sites cannot alter the fact that the bad faith act had occurred during the period following registration ». See also Valor Econômico SA v. Daniel Allende, WIPO Case No. D2001-0523.
In view of the above, it is clear that the domain name <clobex.com> has been registered and used in bad faith by Respondent.
Complainant has no knowledge whether and how the domain names <clobex.net> and <clobex.org> have been actively used. However, according to previous decisions, passive holding of a domain name may constitute registration and use in bad faith (see Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Among the circumstances warranting a finding of bad faith on the part of the Respondent was, according to the Telstra decision, the fact to take active steps to conceal one’s true identity (by operating under a name that is not registered as a business name) and the fact to actively provide false contact details to the Registrar. Relevant was also the fact that the Respondent had provided no evidence of any actual or contemplated use of the domain name.
In view of the fact that « Clobex » is an invented word, and in view of the efforts developed by Respondent to conceal its identity and to provide only useless information to the Registrar, it must be found that the passive holding of the domain names <clobex.net> and <clobex.org> amounts to registration and use in bad faith.
Finally, the result of the registration and holding by Respondent of the three contested domain names is that Complainant is prevented in an unfair manner from reflecting its trademark in a corresponding domain name.
Consequently, the Respondent has registered the contested domain names in bad faith. The requirement of paragraph 4(a)(iii) of the policy is therefore satisfied.
As already stated the Respondent has not filed a response.
6. Discussion and Findings
Based on the facts that has been presented before the Panel, the Panel finds that it is without any reasonable doubt that the Registrants of the contested domain names and thus the Respondent to these proceedings are indeed one and the same entity. The Panel thus finds that the information provided mainly by the Complainant, but which the Respondent, has not rebutted, is reliable and will base its decision on them. This information is supported by the fact that the letters sent by the WIPO Center to the addresses of the Respondent were all returned and that the e-mail addresses indicated in the Registries WHOIS-databases are the same for all contested domain names. The Panel wants to stress that the Respondent must, also on this point, bear the consequences of not responding.
According to Paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainant’s mark CLOBEX is registered and has been used in many countries around the world including the United States of America, which is indicated as one of the home countries of the Respondent.
The contested domain names all contain the mark in its entirety with the addition of the respective gTLD denominations.
The domain names are thus identical to the trademark in which the Complainant has rights.
The requirements set out in the Policy, Paragraph 4(a)(i) are therefore fulfilled.
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.
Further, the Respondent has not demonstrated that he has any prior rights in the domain name. Respondent seems to perform business activities under different names including the name CLOBEX. CLOBEX is also used as part of the e-mail address, by which you can get in contact with Respondent, namely < firstname.lastname@example.org>. Respondent has in an e-mail to Complainant claimed to have rights to the said name, but Respondent has not demonstrated that he has any prior rights to the name that are recorded in any official registries such as a companies registry or a trademarks registry.
In addition, no evidence has been put before the Panel that shows that Respondent was commonly known by the domain name before that time. The domain name <clobex.com> has previously been in active use and contained at that time banner ads referring to other web sites with a pornographic content. The domain name has thus not been used for any kind of independent activities.
The requirements of the Policy, Paragraphs 4(a)(ii) are also considered fulfilled.
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.
The name CLOBEX is a coined and distinctive word. Respondent has not given any explanation as to why this particular name was chosen as business identifier and registered as domain name. Although the exact geographical location of Respondent is unclear, in view of the geographical registration and use of the mark CLOBEX by the Complainant it seems unlikely that Respondent had no knowledge of the said mark when registering the contested domain names.
The Panel notes, that no web-sites under the contested domain names are presently in-active, but the Panel explicitly agrees that such passive holding or passive used of domain names is also "use" within the meaning of this Policy. See WIPO Case No. D2000-0003 and several subsequent decisions. Such passive holding clearly prevents the Complainant from reflecting their mark in the corresponding domain names.
It is also a fact that Respondent has offered to sell the domain name to Complainant for US$ 100.000. This was done when the Complainant approached Respondent demanding him to cease using the name.
Weighing all the facts evidence before it the Panel therefore concludes that the Respondent was acting in bad faith pursuant to Paragraph 4(a)(iii) of the Policy, when they registered the contested domain names.
Consequently, the Panel finds that all the preconditions set forth in Paragraph 4(a) of the Policy are met.
In view of the above circumstances and facts the Panel finds that the domain names <clobex.com>, <clobex.net> and <clobex.org> registered by the Respondent is identical to the trademark in which the Complainant has rights, that the Respondent does not have any rights or legitimate interests in respect of the domain names, and that the domain names have been registered and are being used in bad faith.
Consequently, the Panel decides that the domain names <clobex.com>, <clobex.net> and <clobex.org> be transferred to the Complainant.
Dated: May 21, 2002