WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dermalogica, Inc. and The International Dermal Institute, Inc. v. Dermalogics Skincare Teoranta
Case No. DIE2007-0004
1. The Parties
The Complainants are Dermalogica, Inc. and The International Dermal Institute, Inc. of Carson, California, United States of America, represented by Barlow Robbins LLP, Solicitors, Woking, Surrey, United Kingdom.
The Respondent is, Dermalogics Skincare Teoranta, of Falcarragh, County Donegal, Ireland.
2. The Domain Name and Registrar
The disputed domain name <dermalogics.ie> is registered with IE Domain Registry Limited.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2007.
On September 26, 2007, the Center transmitted by email to IE Domain Registry Limited a request for registrar verification in connection with the domain name at issue.
On September 26, 2007, IE Domain Registry Limited transmitted by email to the Center its verification response confirming that the IE Domain Registry had received a copy of the Complaint, that the domain name at issue is registered with the IE Domain Registry, that the Respondent is listed as the registrant of the domain name at issue and providing the contact details for the administrative, billing, and technical contacts.
The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “IEDR Rules”), and the WIPO Center Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “IEDR Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, on October 9, 2007 the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 9, 2007. The stated due date for Response was October 9, 2007.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2007.
The Center appointed James Bridgeman as the sole panelist in this matter on November 15, 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 IEDR Rules.
On December 3, 2007, due to an error in the original notification dating the response deadline as October 9, 2007, the Center re-notified the Respondent of the Complaint. The further Notification of Complaint and Commencement of Administrative Proceeding notified the Respondent that the time for filing a Response was extended to December 23, 2007.
The Respondent once again did not submit any response by the extended deadline.
On December 31, 2007, the Center notified the Respondent’s default and confirmed the appointment of James Bridgeman as sole panelist.
4. Factual Background
The Complainants are the owners of 60 trademark registrations throughout the world for the DERMALOGICA mark including:
- Irish Trademark Registration number 167678 registered in the name of Dermalogica Inc. as of May 2, 1995 in respect of listed goods in class 3.
- Community Trademark number 00256156 registered in the name of Dermalogica Inc. as of January 22, 1999 in respect of listed goods in class 3.
- United Kingdom Trademark registration number 1301528 registered as of February 19, 1987 in the name of The International Dermal Institute Inc.
The Complainants also own the gTLD Internet domain name <dermalogica.com> and the ccTLD <dermalogica.co.uk>, both of which domain names resolve to a website established by the Complainants.
5. Parties’ Contentions
In addition to their rights in the above referenced trademark registrations, the Complainants rely on their reputation and goodwill in the use of the trademark DERMALOGICA which they have used for over 20 years to identify their skincare products.
The first named Complainant Dermalogica Inc., was founded in 1986. The second named Complainant, International Dermal Institute, is a post-graduate training facility for skincare therapists and was founded in 1983. The Complainants’ products are sold worldwide and the Complainants have offices in Ireland, France, the United States of America, Canada, the United Kingdom, Australia and Germany. In addition the Complainants have distributors in a number of other jurisdictions.
The Complainants’ Dermalogica products have been advertised and/or promoted throughout Ireland and Britain for a number of years on the Complainants’ said website established at the “www.dermalogica.com” and “www.dermalogica.co.uk” addresses and by means of advertisements and promotions. The Complainants have exhibited examples of the advertisements in an annex to the Complaint. The Complainants have also provided copies of references to their Dermalogica products in magazines that circulate on the island of Ireland.
Furthermore the Complainants’ products are sold throughout Ireland and Britain by over 4,500 trained and qualified skincare therapists at high street outlets, fitness clubs, spas and hotels.
In the circumstances the Complainants submit that their trademark DERMALOGICA is a Protected Identifier owned by the Complainants.
The Complainants submit that the domain name in dispute is misleadingly similar to the Protected Identifier DERMALOGICA in which the Complainants have rights: Ignoring the suffix .ie, both are 11 letter words; the first 10 letters of both are identical and differ only by the fact hat the eleventh letter has been changed from “a” to “s”. The Complainants note that the letters “a” and “s” are immediately next to each other on the “qwerty” keyboard. The domain name and the Protected Identifier are similar visually, orally and phonetically and are misleadingly similar. The misspelling of the Protected Identifier by the replacement of the letter “a” with “s” is likely to be commonplace because of the proximity of the letters on the qwerty keyboard.
The Complainants submit that the Respondent has no rights in the domain name in dispute and the Respondent has adopted the domain name to take unlawful and unfair advantage of the Complainants’ rights in the name Dermalogica. It has been widely held that unlawful registration and use of a domain name cannot be a bona fide use under the UDRP. Viacom International v. TVDOT.net Inc., WIPO Case No. D2000-1253.
The domain name adopted by the Respondent is simply a misspelling of the Complainants’ Protected Identifier. It is the type of misspelling that Internet users may often make because of the likelihood of mis-typing the Complainants’ name and mark or by imperfect recollection.
Given the extreme similarity between the Protected Identifier and the domain name at issue, and the fact that they are both made up words without any dictionary meaning the only explanation for the choice is that the Respondent has intentionally adopted the Complainants’ name and mark.
It is not clear when the Respondent first registered the domain name in dispute but the Complainants first became aware of the domain name in dispute in early 2005. The Complainants rights in their registered trademarks go back to February 1987 and their first use of the DERMALOGICA trademark was 20 years ago in the Untied States of America.
The Complainants submit that the domain name at issue was registered or has been subsequently used in bad faith. The Complainants submit that the Respondent through its use of the domain name, intentionally attempted to attract Internet users to a website or other online location by creating confusion with a Protected Identifier in which the Complainants have rights and that the use of the domain name at issue is likely to dilute the reputation of a trade or service mark in which the Complainants have rights. In this regard the Complainants rely on paragraphs 2.1.4 and 2.1.5 of the IEDR Policy.
The Complainants allege that the misspelling of the Complainants’ Protected Identifier as described above amounts to typosquatting on the part of the Respondent in registering and using the domain name in dispute. The Complainants cite the decisions of the panels in UDRP cases Amazon.com inc. v. Steven Newman a/k/a Jill Waserstein a/d/a Pluto Newman, WIPO Case No. D2006-0517 and Microsoft Corporation v. Microsoft.com a/k/a Tarek Ahmed, WIPO Case No. D2006-0548 (sic) in support of this proposition. [The Panel notes that this is presumably a reference to WIPO Case No. D2000-0548].
The likelihood of confusion is exacerbated by the fact that the Respondent is offering goods and services that are similar to those offered by the Complainants. In this regard the Complainants refer to print-outs of web pages from the Respondent’s website annexed to the Complaint, on which the Respondent offers medicated skincare products under the name “Dermacinz”.
Given the similarity between the Complainants’ trademark and the domain name in dispute, there can be no doubt that Internet users seeking the Complainants and their products will be drawn to the Respondent’s website and the Respondent’s use of the domain name will dilute the Complainants’ trademark.
The Complainants have written to the directors of the Respondent firm on two separate occasions complaining about, inter alia, the Respondent’s use of the domain name in dispute. The Respondent has agreed to cease use of Complainant’s mark on two separate occasions but has failed to honour either undertaking. The Complainants have submitted copies of the correspondence as an annex to the Complaint.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 1 of the IEDR Policy places on the Complainants the obligation to prove that:
1.1.1 the domain name at issue is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights; and
1.1.2 the Registrants have no rights in law or legitimate interests in respect of the domain name at issue; and
1.1.3 the domain name at issue has been registered or is being used in bad faith.
Paragraph 1.3.1 of the IEDR Policy defines Protected Identifiers for the purpose of the IEDR Policy as including trade and service marks protected in the island of Ireland.
A. Identical or Confusingly Similar
The Complainants have clearly established that they have rights in the trademark DERMALOGICA.
The Complainants’ trademark is protected in both jurisdictions on the island of Ireland both by registration and at common law and is therefore a Protected Identifier as defined by paragraph 1.3.1 of the IEDR Policy.
The domain name <dermalogics.ie> is almost identical and is misleadingly similar to the Complainants’ Protected Identifier DERMALOGICA.
As the Complainants have submitted the domain name and the Protected Identifier are similar visually, orally and phonetically and are misleadingly similar. The misspelling of the Protected Identifier by the replacement of the letter “a” with “s” is likely to be commonplace because of the proximity of the letters on the qwerty keyboard.
The Complainant has therefore satisfied the first element of the test in paragraph 1 of the IEDR Policy.
B. Rights or Legitimate Interests
While the domain name at issue consists of the first word in the Respondent’s company name, an email message sent by two directors of the Respondent to the representative of the Complainants dated September 29, 2007, a copy of which was exhibited as an annex to the Complaint, refers to the Complainants’ allegations that the Respondent has infringed UK trademark number 1301538 and Community trademark number 00256155 for the mark DERMALOGICA by use of the name “Dermalogics” and states:
“We will, with effect from 1 April 2007
A. Cease to use the name Dermalogics
B. Confirm that all advertising, promotional, instructional and other documentation in our possession will be renamed.
C. We will not use the sign Dermalogics or any similar name.”
The Complainants have also exhibited a copy of a letter, typed on the Respondent’s headed notepaper, sent by the Respondent to the representatives of the Complainants, signed by one of the directors of the Respondent. Said letter appears to have been signed on November 27, 2006 but is date-stamped February 3, 2007 by the Complainants’ representative’s office and contains, inter alia, undertakings by the Respondent to cease use of the word “Dermalogics” on or before April 1, 2007.
In the absence of a Response or any explanation from the Respondent, this Panel is satisfied that these undertakings demonstrate that the Respondent has accepted that it is not entitled to use the name or mark Dermalogics and therefore has no rights or legitimate interest in the domain name at issue.
The Complainants are therefore entitled to succeed on the second element of paragraph 1 of the IEDR Policy also.
C. Registered or Used in Bad Faith
The Complainants have submitted evidence that their DERMALOGICA trademark has been registered, used and promoted in both jurisdictions on the island of Ireland.
Given the similarity of the domain name in dispute to the Complainants’ Protected Identifier, that the Complainants’ Protected Identifier is a distinctive coined word, that the Complainants have used, advertised and promoted the DERMALOGICA mark in Ireland and the United Kingdom, and that the Respondent is a competitor of the Complainants, it is probable that the Respondent was aware of the Complainants and their reputation when the domain name was registered. It would seem improbable that the choice of the domain name was a mere coincidence.
Furthermore the print-out of the website, to which the domain name in dispute resolves, established by the Respondent, demonstrates that as of October 9, 2007 (the date of the print-out), the Respondent, being a competitor of the Complainants, was using the domain name to market skin-care products.
In the circumstances, and in the absence of any Response or explanation from the Respondent, this Panel is satisfied that on the balance of probabilities the Respondent chose, registered and has used the domain name in order to take predatory advantage of the Complainants’ goodwill in the trademark and Protected Identifier DERMALOGICA.
The Complainants have also put forward a strong argument that by choosing this particular sequence of letters, the Respondent has engaged in typosquatting. This Panel is not convinced that this is the case, but it is nonetheless clear that through its registration and use of the domain name at issue, the Respondent has intentionally attempted to attract Internet users to a website or other online location by creating confusion with the Protected Identifier in which the Complainants have rights.
It follows that the Complainants have satisfied the Panel that the domain name was both registered and is being used in bad faith, of which either would have sufficed under the IEDR. The Complainants have therefore satisfied the third and final element of the test in paragraph 1 of the IEDR and are entitled to succeed in their application.
For all the foregoing reasons, in accordance with paragraphs 1.1 of the IEDR Policy the Panel orders that the domain name <dermalogics.ie> be transferred to the Complainants.
Dated: January 3, 2007