WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allergan Inc. v. Kerima Kellerman
Case No. D2011-0787
1. The Parties
The Complainant is Allergan Inc., Irvine, United States of America, represented by González-Bueno & Asociados, Madrid, Spain.
The Respondent is Kerima Kellerman, Palma de Mallorca, Spain.
2. The Domain Name and Registrar
The Disputed Domain Name, <botoxkosmetik.com> is registered with PSI-USA, Inc. dba Domain Robot.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2011. On May 5, 2011, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot a request for registrar verification in connection with the Disputed Domain Name. On May 6, 2011, PSI-USA, Inc. dba Domain Robot 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 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2011. No formal Response was received by the due date. The Respondent sent an informal email to the Center on May 29, 2011. The Center wrote to the Respondent on May 31, 2011 requesting confirmation that the Respondent intended this email to be taken as the Respondent's formal Response. The Respondent sent a further email to the Center on June 6, 2011, but did not provide the confirmation requested by the Center. Accordingly, these communications taken together or separately cannot be taken as a formal Response,
The Center appointed Gabriela Kennedy as the sole panelist in this matter on June 22, 2011. 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 US based company operating in the cosmetic products industry. The Complainant has an international trademark portfolio for “Botox”, a product which is used to prevent formation of wrinkles by paralyzing facial muscles, and it has widely used this trademark for marketing its products. The Complainant also holds several domain names consisting of or encompassing the trademark BOTOX, including for example “www.botoxkosmetic.com” and “www.botoxcosmetic.com”.
The Respondent appears to be an individual based in Spain. The Disputed Domain Name was registered on March 7, 2011 and at the time of filing the Complaint, the Disputed Domain Name pointed to the “www.ligne-saintclaire.com” website, which advertised for sale cosmetic products and treatments (the “Website”). The Respondent appears to be involved with the company that operates the Website, Ligne Saint Claire. The Panel notes that at the time of the decision, the Website no longer resolves to an active webpage.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
(a) The Disputed Domain Name is confusingly similar to the Complainant’s earlier trademarks BOTOX. Addition of the word “kosmetik” (a generic term which is a German translation of “cosmetic”) will not help to overcome the risk of consumer confusion;
(b) The Complainant owns several domain names, which incorporate the trademark BOTOX such as “botox.com”. The Disputed Domain Name is confusingly similar to several domain names registered by the Complainant such as “botoxkosmetic.com”, “botoxcosmetic.com” or “botox-cosmetic.com”;
(c) The trademark BOTOX is a well-known trademark in the market. In addition, the Complainant asserts that the Respondent clearly had knowledge of the Complainant’s trademarks, because it specifically used the BOTOX trademarks on its websites;
(d) The Respondent does not have legitimate rights or interests in the Disputed Domain Name. The respondent is aware of the trademark registration for BOTOX as well as the Complainant’s products;
(e) The Respondent is neither commonly known by the Disputed Domain Name nor is making or intends to make, a legitimate non-commercial or fair use of the Disputed Domain Name;
(f) The Disputed Domain Name was registered and is being used in bad faith as the Respondent knew of the Complainant's trademark when it registered the Disputed Domain Name; and
(g) The respondent is using the Complainant’s trademark to advertise their own products which is likely to confuse consumers.
The Respondent did not reply to the Complainant’s contentions. The Center received two informal communications from the Respondent on May 29 and June 6, 2011, which have been drawn to the Panel’s attention accordingly.
The fact that the Respondent has not submitted a (formal) Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file such Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000 0403; Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and are being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of BOTOX trademark on the basis of its international portfolio of trademark registrations for this mark, including registrations in the European Community, Germany, France, Spain, Portugal, the United Kingdom and the United States, as well as international registrations. The Panel also accepts that BOTOX is a well-known trademark, as recognised by various Spanish Courts.
It is a well-established rule that in making an enquiry as to whether a trademark is identical or confusingly similar to a domain name, the domain extension, in this case “.com” should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Disputed Domain Name incorporates the Complainant’s BOTOX trademark in its entirety. The only difference is the inclusion of “kosmetik” as a description. It is well-established that in cases where the distinctive and prominent element of a Disputed Domain Name is the Complainant’s mark and the only addition is a generic term that adds no distinctive element, such an addition does not negate the confusing similarity between the Disputed Domain Name and the mark. See Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088.
The Panel finds that “Botox” is the distinctive component of the Disputed Domain Name and the addition of the word “kosmetik” does nothing to distinguish it from the Complainant’s trademark. Given that the Complainant is in the business of manufacturing and selling cosmetic products, the “kosmetik” (German for “cosmetic”) component of the Disputed Domain Name if anything serves to increase the likelihood that consumers will be misled into thinking that the Disputed Domain Name is somehow associated with the Complainant.
In addition, the Complainant has registered numerous domain names that are very similar to the Disputed Domain Name, which only increases the likelihood of consumer confusion.
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the BOTOX trademark in which the Complainant has rights, and that element 4(a) (i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview”) states that once a Complainant makes a prima facie case in respect of the lack of rights of legitimate interests of the Respondent, the Respondent carriers the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where the Respondent fails to do so, a complaint is deemed to have satisfied paragraph 4(a) (ii) of the policy.
The Respondent has not filed any formal Response to the Complaint.
The Panel finds that there is no evidence that the Respondent has any rights in any trademarks or service marks which are identical or similar to the Disputed Domain Name. The Panel accepts that the Complainant has not authorized the Respondent to use the BOTOX trademark. Accordingly the only way for the Respondent to acquire rights or legitimate interests in the Disputed Domain Name for the purposes of 4(a) (ii) of the Policy would be through use of the Disputed Domain Name for legitimate non-commercial purposes or in connection with bona fide offering of goods are services.
The Panel accepts that the Respondent had knowledge of the Complainant’s BOTOX trademark, due to the fame of the BOTOX mark (particularly amongst competitors in the cosmetics industry), but also due to the fact that the Website makes specific reference to the Complainant’s BOTOX trademark, for the purpose of comparing its own products with those of the Complainant. Using a domain name to intentionally trade on the fame or reputation of another constitutes unfair use, and cannot amount to bona fide offering of goods and services: Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a) (ii) of the Policy in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) The Policy requires the Complainant to establish that the Respondent registered and used the Disputed Domain Name in Bad Faith (the “conjunctive requirement”).
Evidence of bad faith includes actual or constructive notice of a well known trademark at the time of registration of a domain name by a respondent. See Samsonite Corporation v. Colony Holding, NAF Case No. FA 94313. The Panel accepts that the Respondent was aware of the Complainant's BOTOX trademark at the time of registering the Disputed Domain Name. This is due to the degree of fame of the Complainant's BOTOX mark, as well as the fact that the Website contained references to the Complainant's trademark, before it was taken down. The fact that the Respondent removed the Website after the Complaint was filed may also suggest that the Respondent was acting in bad faith when registering and using the Disputed Domain Name.
The Panel also finds that the Respondent is attempting to attract Internet users to the Website by creating a likelihood of confusion with the Complainant’s BOTOX trademark as to the source, sponsorship and affiliation of the Website and with a view to attracting business from the Complainant's potential customers.
In the circumstances, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <botoxkosmetik.com> be transferred to the Complainant.
Dated: July 5, 2011