The Complainant is Industrial Farmacéutica Cantabria, S.A. of Madrid, Spain, represented by Cuatrecasas, Gonçalves Pereira, Spain.
The Respondent is Mr. Gideon Kimbrell of Montana, United States of America.
The disputed domain name, <heliocaremakeup.com> (the “Domain Name”), is registered with GoDaddy.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2010. On May 7, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar 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” or “UDRP”), 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 May 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 2, 2010.
The Center appointed Tony Willoughby as the sole panelist in this matter on June 16, 2010. 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.
The Complainant was incorporated in Spain in 1994 and is engaged in the research, development and commercialization of inter alia skin care products and technologies. One of its product ranges is sold under the brand name HELIOCARE. The Complainant is the proprietor of several trade mark registrations including Spanish registration no. 1970828 dated June 13, 1995 HELIOCARE in class 3 and United States (“U.S.”) registration no. 3011641 dated August 19, 2005 HELIOCARE also in class 3.
The Complainant claims (and has produced evidence to support the claim) that its HELIOCARE range of skincare products has been well-known internationally for many years. The Panel accepts that to be the fact.
The Respondent is a software engineer who has been associated with several businesses engaged in the medical field including MedCenter Canada Inc., Syragon LLC, Express Medicine and Kiwi Drug. The Domain Name was registered on November 23, 2009.
The Domain Name is connected to a website which claims to be a non-profit site operated by an independent information service providing information on HELIOCARE skin products. However, the home page features a “Buy Heliocare Now!” link, which takes the visitor to the Kiwi Drug commercial site, Kiwi Drug being a business with which the Respondent is associated. The home page also features advertising links to sites offering products for sale, which have no connection with the Complainant1.
The Complainant contends that the Domain Name is confusingly similar to its HELIOCARE trade mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
The Domain Name comprises the Complainant's registered trade mark HELIOCARE, the descriptor, “make up”, and finally the generic domain suffix, which may be ignored for the purpose of assessing identity and confusing similarity under this head of the Policy. The most prominent element of the Domain Name is the Complainant's registered trade mark.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances, any one of which, if established to the satisfaction of the Panel, shall demonstrate rights or legitimate interests for the purpose of this head of the Policy. The Complainant contends that none of them is applicable.
The Complainant asserts that it has no connection with the Respondent and has not granted the Respondent any permission to use its HELIOCARE trade mark. It contends that the Respondent registered the Domain Name for the purpose of using it as it is now using it, namely to attract Internet users to the site on the back of the fame of the Complainant's trade mark and with a view to leading those Internet users onto commercial sites with which the Respondent is associated for the purpose of supplying a wide variety of favourably priced healthcare products, as well as the Complainant's HELIOCARE range.
The Complainant asserts that this is not a bona fide use of the Domain Name, nor is it a legitimate non-commercial or fair use of the Domain Name. Self–evidently the Domain Name is not and does not approximate to any name by which the Respondent is known.
The Panel agrees. The Panel regards it as probable that a not insignificant number of visitors to the site will be doing so in the belief that the site is an official site of the Complainant or an authorized distributor of the Complainant. Had the site been a non-commercial site devoted exclusively to the provision of information on the Complainant's HELIOCARE range of products, the Respondent might have had a defence to the Complainant's allegation. However, that is not the position (see section 4 above). The Panel is of the view that the Complainant has made out a strong prima facie case calling for an answer from the Respondent. The Respondent has declined to answer the Complainant's case.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
By the same reasoning the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, which provides: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
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, <heliocaremakeup.com>, be transferred to the Complainant.
Dated: June 30, 2010
1 The Panel notes that these links now appear to have been removed and/or rendered inoperable.