WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Laboratoire Sintyl v. Physiodermie.com c/o Whois IDentity Shield / Domain Adminstrador Laboratoire Sintyl
Case No. D2007-1204
1. The Parties
The Complainant is Laboratoire Sintyl, of Carouge, Switzerland, represented by Etude de Me Philippe Azzola, Switzerland.
The Respondent is Physiodermie.com c/o Whois IDentity Shield / Domain Adminstrador Laboratoire Sintyl, of Vancouver, Canada.
2. The Domain Name and Registrar
The disputed domain name <physiodermie.com> is registered with Nameview Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2007. On August 17, 2007, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On August 28, 2007, Nameview Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 September 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2007.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on October 1, 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 Swiss manufacturer of a range of skin and hair care products under the name Physiodermie and as part of its process of skin and hair care known as Methode Physiodermie. Pursuant to its adoption of the name Physiodermie, it registered the domain name <physiodermie.ch> and uses the name physiodermie prominently on its website.
The Complainant is the registered owner of two trademarks, namely:
(a) the Swiss trademark Number P-307022 registered on July 31, 1980 and renewed on July 31, 2000 for PHYSIODERMIE + logo + PHYSIOCOIFFEUR; and
(b) the International Trademark registered on December 2, 1980 and renewed on December 2, 2000 for PHYSIODERMIE + logo + PHYSIOCOIFFEUR.
The Respondent registered the disputed domain name on December 28, 2001 and it has resolved to a website which promoted various products in connection with skin and hair care. The website has been headed “Welcome to physiodermie.com” and carried the statement “For resources and information on Skin care products and Physiodermie”, although the suppliers advertised on the website have no relationship with the Complainant or its Physiodermie products.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name <physiodermie.com> should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of Paragraph 4(a) of the Policy, the domain name is confusingly similar to the Complainant’s registered trademarks PHYSIODERMIE + logo + PHYSIOCOIFFEUR, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered trademarks to which reference has already been made (together referred to as “the PHYSIODERMIE mark”). It then says that the domain name <physiodermie.com>, is confusingly similar to the PHYSIODERMIE mark because the domain name contains one of the main characteristics or elements of the trademark and an objective observer would find the two confusingly similar.
The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name because there is no relationship between the Complainant and the Respondent and the Complainant did not give any authorization to the Respondent to use its trademarks. Moreover, it is argued, the Respondent has no intellectual property in the PHYSIODERMIE mark and the use by the Respondent of the website to which the domain name resolves is not a legitimate one, for it promotes the products and services of the Complainant’s competitors and other third parties.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because by using the domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark. That is so, it is contended, because the Complainant has built up a sound reputation by using the PHYSIODERMIE mark to describe its products for over 30 years and the Respondent has been using the same name without permission to promote the products of the Complainant’s competitors.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is 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 applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a Respondent, a Complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, Paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy, that:
A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. The Respondent has no rights or legitimate interests in respect of the domain name; and
C. The domain name has been registered and is being used in bad faith.
It is to be noted that Paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Respondent has taken a significant and prominent part of the PHYSIODERMIE mark, namely the word “physiodermie” itself and has used it to constitute the entirety of the disputed domain name. The question therefore arises whether that degree of similarity between the domain name and the trademark can make the former confusingly similar to the latter.
It was held in the decision cited by the Complainant, Banque Saudi Fransi v. ABCIB, WIPO Case No. D2003-0656, that the domain name <alfransi.com> was confusingly similar to the registered trademark ALBANK AL SAUDI AL FRANSI, although, as in the present case, only part of the trademark had been used in the domain name. As the panel said: “To the extent that the domain name contains a part of the Complainant’s registered mark the Panel considers that an abbreviation of a registered mark incorporated into a domain name may constitute confusing similarity (see e.g. Dow Jones & Company, Inc. & Dow Jones LP v. T.S.E. Parts, WIPO Case No. D2001-0381).” The panel rightly pointed out, however, that “…this cannot be an absolute rule in determining UDRP disputes and … the matter must turn on the facts of each case.”
In reaching the conclusion that the domain name was confusingly similar to the trademark the panel also noted the significant fact that the Complainant itself “…has conducted its business on-line by use of the <alfansi.com> domain name…”
Likewise, in the present case, the Panel also notes than an equivalent fact is also present, for the evidence is that the Complainant conducts its business on-line by use of the domain name <physiodermie.ch> and its products are described and known by the Physiodermie brand.
That being so, in addition to the objectively evident confusing similarity between the disputed domain name and the distinctive component of the Complainant’s mark, there is in the opinion of the Panel also little doubt that the internet public would regard the domain name as referring to the products of the Complainant that are sold under the PHYSIODERMIE mark.
It is also well established that gTLD suffixes like “.com” are to be disregarded for the purposes of this comparison. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark and the Complainant has therefore made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if a respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail.
The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not file a Response or any other form of submission. The Respondent in the present case was given notice that it had until September 23, 2007 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also well established that, as it is put in paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, “…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.
The Respondent chose as its domain name, without the Complainants’ authorization, a significant and prominent part of the PHYSIODERMIE mark and the name under which the Complainant sells its products. The Respondent then linked the domain name to a website containing links to businesses providing services in direct competition to the Complainant and goods and services of other third parties.
Under similar circumstances, it has been held many times, as it was put in Baudville, In. v. Henry Chan, WIPO Case No. D2004-0059, that “…no rights or legitimate interest derive from this type of use of another’s trademark”. Nor, as the Complainant contends, was there any relationship between the Complainant and the Respondent and the Complainant did not give any authorization to the Respondent to use its trademarks.
These facts give rise to the prima facie case made out by the Complainant. The Respondent has not made any attempt to rebut this prima facie case, and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
The Complainant has thus made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.”
The Panel finds that the Complainant has made out its case under paragraphs 4(b) of the Policy including in particular paragraph 4(iv).
In general, noting that the examples in paragraph 4(b) are non exhaustive, the Panel finds, first, that the Respondent in all likelihood registered the domain name knowing full well of the existence and reputation of the Physiodermie name and the PHYSIODERMIE mark and that they referring to a prominent manufacturer and supplier of skin and hair care products, namely the Complainant. Secondly, the Panel infers that the Respondent’s intention in registering the domain name and linking it to a website that promoted the same sort of products under the name “Physiodermie”, was to divert part of the Complainant’s potential market for its products in those fields to the Respondent’s own advantage by obtaining click-through revenue for Internet traffic to the Respondent’s website and other sites to which the website had been linked. It is difficult to believe that the domain name was registered for any reason other than to attract potential users to those websites and to make money from doing so.
The reality as shown by the evidence is that Physiodermie, its name and renown in the fields of skin and hair care medical science and its trademark PHYSIODERMIE had become prominent long before the registration of the domain name and it was in all likelihood chosen by the Respondent with the intention of trading on it and attracting Internet users because of its fame. Those Internet users, attracted to the domain name, would otherwise have been potential customers of the Complainant’s and to divert them in this way and direct potential customers away from the Complainant and towards rival suppliers of similar goods and services can only be described as disrupting the business of the Complainant.
It would be difficult, therefore, to contemplate a more obvious case of disrupting a trademark owner’s business than to engage in conduct that has the effect of urging designed to urge potential customers not to buy its goods and services from the trademark owner, but rather to buy similar products from rival manufacturers. That is clearly what the Respondent has been doing and what the Panel finds that it intended to do when it registered the trademark.
With respect to paragraph 4(b)(iv) in particular, the Panel finds that the Respondent’s actions also constitute bad faith in both registration and use within the meaning of paragraph 4(b)(iv) of the Policy. The reasons why that element has been made out are as follows.
First, the Respondent has undoubtedly been attempting to attract Internet users to its website within the meaning of paragraph 4(b)(iv), both with respect to the registration of the domain name and its use. Looking at the screenshot of the website to which the domain name has resolved, which appears as it was on August 8, 2007 in Annex 5 to the Complaint, it is impossible to accept that this was done for any reason other than commercial gain in one form or another.
Secondly, by using the significant and prominent part of the PHYSIODERMIE mark as its domain name, namely the word “physiodermie”, the Respondent created the likelihood of confusion with the PHYSIODERMIE mark itself.
Thirdly, the confusion likely to be created is confusion with the PHYSIODERMIE mark about the affiliation of various goods and services on the Respondent’s website and as to whether they are the Complainant’s products or endorsed by it or are in some way associated with it, particularly as the website promotes not only products described as “Skin care products” and the like, but goods and services that are actually promoted under the headings “Physiodermie” and “Methode physiodermie”, two expressions associated with the goods and services of the Complainant. Clearly, consumers who are using the disputed domain name would have arrived at this website because they were seeking a specific brand name that they knew existed, namely Physiodermie. When the website promotes goods and services described as “Physiodermie” and “Methode physiodermie” and declares that the website is “For resources and information on Skin care products and Physiodermie”, as it does, consumers are entitled to believe that these are Physiodermie products, which they are not.
When consumers also see “facial” products and “Cosmetics” promoted on the website and the other sites to which it is linked, they will in all probability assume that those products are also being promoted with the imprimatur of the Complainant and Physiodermie, which they are not.
There is therefore clear scope for confusion as to whether the goods and services being promoted on the website are associated with Physiodermie and the Complainant.
The Panel finds that these circumstances create confusion with the Complainant’s trademark as to the sponsorship, affiliation and endorsement of the Respondent’s site and the products and services on it and that the Respondent must be taken to have intended this confusion and to have been doing it for commercial gain in one form or another.
The facts therefore come within paragraph 4(b)(iv) of the Policy and constitute bad faith both in registration and use, a conclusion that has often been reached by UDRP Panels on analogous facts; see for example: Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100; MathForum.co v. Weiguang Huang, WIPO Case No. D2000-0743 and IndyMac Bank v. F.S.B. v. Jim Kato, FA 190366 (Nat. Arb. Forum). In this regard, the comments of the panelist in Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100 are apposite:
“Complainant has alleged and the Panelist finds that Respondent’s use of the domain name at issue to resolve to a website where services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site. This constitutes evidence of bad faith registration and use under the Policy, Paragraph 4(b)(iv). InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076; America Online Inc .v. Cyber Network LLP, WIPO Case No. D2000-0977”.
The Panel also accepts the submission of the Complainant that the Respondent sought to conceal its true identity by registering the domain name in the name “PHYSIODERMIE.COM” as the registrant and by using an identity shield. Furnishing of false or incomplete contact information to the Registrar in this manner has often been held to be evidence of bad faith in the registration and subsequent use of a domain name: Playboy Enterprises International, Inc., v. Universal Internet Technologies, Inc., WIPO Case No. D2001-0811 and Sources Minerales SA v. Jorge Clapes, WIPO Case No. D2001-0680.
For these reasons, the Panel finds that the Respondent registered and used the domain name in bad faith and that the Complainant has therefore made out the third of the three elements that it must prove.
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 <physiodermie.com> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Dated: October 15, 2007