WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dermalog Identification Systems v. Ecommerce Advertising
Case No. D2006-1577
1. The Parties
The Complainant is Dermalog Identification Systems, Hamburg, Germany, represented by Uexkull & Stolberg, Germany.
The Respondent is Ecommerce Advertising, West Bay, Grand Cayman Islands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <dermalog.com> is registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2006. On December 14, 2006, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On December 14, 2006, BulkRegister.com 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 January 10, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2007.
The Center appointed Knud Wallberg as the sole panelist in this matter on February 13, 2007. 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 Complainant is a German based company engaged in the business of manufacturing and distribution of biometric identification systems. Complainant is using the trademark DERMALOG for these goods and services. DERMALOG is registered in several jurisdictions around the world including Germany, the European Union and the United States of America.
5. Parties’ Contentions
The contested domain name is identical to Complainant’s trademark.
The Complainant contends that the Respondent has no rights or legitimate interest in the domain name. Respondent is not commonly known under the domain name and does not appear to hold any registered rights in the name. Further, there is no formal connection between the Complainant and the Respondent and the Respondent is not using the domain name for bona fide offering of goods and services. On the contrary, the website “www.dermalog.com” contains several links to competitors of the Complainant or to websites that are not related to the Complainant.
The Complainant further contends that the contested domain name is registered and used in bad faith. DERMALOG is a trademark belonging to the Complainant. Since DERMALOG is a coined word the Respondent must clearly have been aware of this when he registered the domain name. This is underlined by the way the domain name is actually used as described above. Finally, the Complainant points out by way of reference to other UDRP decisions that the Respondent appears to be engaged in a pattern of disrupting trademark owners by registering corresponding domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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 respects of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
The contested domain name contains Complainant’s distinctive trademark DERMALOG with the addition of the “.com” designation. For the purpose of these proceedings the domain name is found to be identical to the Complainant’s trademark.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled.
B. Rights or Legitimate Interests
According to the Complaint the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this and the way the Respondent has been using and is still using the contested domain name (see below) does not support any findings of possible rights or legitimate interests.
Consequently the Panel finds that the conditions in paragraph 4(a)(ii), cf. 4(c) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove the Respondent’s registration and use of the domain names in bad faith. Paragraph 4(b) of the Policy sets out, by way of example, the kind of evidence that may be put forward.
The Complainant’s trademark was registered and used well in advance of the date of registration of the disputed domain name. Given the geographically widespread use of the Complainant’s trademark and the distinctive nature of the mark, it is inconceivable to the Panel in the circumstances that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant’s mark.
This is underlined by the fact that the disputed domain name is used for a website that contains sponsored links to other sites that offer products of competitors of the Complainant. The Panel therefore finds that the Respondent by registering and using the domain name, intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name in dispute with the purpose of attracting Internet users to the website for commercial gain. Under these circumstances it is not necessary for the Panel to address the additional arguments presented by the Complainant in support of Respondent’s bad faith although the Panel notes that Respondent has been subject to other UDRP proceedings.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <dermalog.com> be transferred to the Complainant.
Dated: February 22, 2007