World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Berman Skin Institute Medical Group, Inc. v. Private Whois

Case No. D2012-0958

1. The Parties

The Complainant is Berman Skin Institute Medical Group, Inc. of Palo Alto, California, United States of America, represented by Latham & Watkins LLP, United States of America.

The Respondent is Private Whois of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <bermanskininstitute.com> is registered with Bargin Register Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2012. On May 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. The Center sent reminder requests on May 10 and 11, 2012. The Registrar did not reply to the request for registrar verification. In light of the above, the Center sent an email communication to the Registrar on May 16, 2012 informing the Registrar that the Center will need to proceed on the assumption that the information gathered from the Complaint and the public WhoIs database is correct and that the Registrar will comply with the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) and all relevant ICANN policies.

The Center verified that the Complaint satisfied the formal requirements of 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 May 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2012. The Center received two informal email communications from a “Mrs. Durrheim” on May 18, 2012 (from a “gmail” address) who denied ownership of the particular disputed domain name.

The Center received another informal email communication from a “Mr. Eskey” of “EC Research” on May 18, 2012 who stated that he believed that he was an unintended recipient. The Panel notes that the relevant email address was notified of these proceedings pursuant to the Rules, paragraph 2(a)(ii)(c).

The Respondent did not submit any formal response. Accordingly, the Center notified the Parties about the commencement of panel appointment procedure on June 8, 2012.

On June 15, 2012, the Center appointed James Bridgeman as the sole panelist in this matter. 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.

On June 29, 2012, having reviewed the case file, the Panel issued Administrative Panel Procedural Order No. 1 in the following terms:

“Having reviewed the Complaint and taking into account the circumstances and claims made therein that: (a) the Complainant “owns and has used the BERMAN SKIN INSTITUTE trade and service marks since at least as early as August 20, 1995”; and (b) the “[c]lients and consumers... have come to expect a high quality product under the BERMAN SKIN INSTITUTE mark, and BSI has thus accumulated substantial goodwill in its mark”; and (c) the “Complainant is entitled to the Policy’s protections because it has developed strong common law rights in the BERMAN SKIN INSTITUTE mark”, the Panel invites the Complainant to provide further statements or evidence in support of its use of the BERMAN SKIN INSTITUTE trademark prior to the date of creation of the disputed domain name. Any such statements or evidence by the Complainant shall be submitted electronically to the Center at domain.disputes@wipo.int and to the other party no later than July 5, 2012. Any reply by the Respondent to matters specifically addressed or raised by the Complainant shall be submitted electronically to the Center at domain.disputes@wipo.int and to the other party no later than July 8, 2012. Accordingly, the due date for decision is extended until July 15, 2012.”

On 13 July 2012, the Complainant submitted a Supplemental Statement in Support of Complaint, requesting an extension of time for the deadline for submission as the due date had been missed due to a misunderstanding. The Panel decided to admit the Supplemental Statement and issued Administrative Panel Procedural Order No. 2, extending the time to admit the Supplemental Statement, allowing the Respondent until July 19 2012 to reply to same and extending the time for the decision to July 23, 2012, The Respondent did not file any reply or submissions by the deadline set.

The Panel proceeded to make this decision.

4. Factual Background

The Complainant claims to be the owner of the trademark and service mark BERMAN SKIN INSTITUTE and to have used the mark in trade since at least as early as August 20, 1995.

The disputed domain name was created on November 22, 2005 and last updated on October 4, 2011.

On January 23, 2012, the Complainant filed an application for registration of United States federal trademark BERMAN SKIN INSTITUTE, application number 85/523300 for goods in Classes 3, 5 and 44.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it is a world-renowned medical institute for dermatologic and aesthetic laser surgeries for dermatology, cosmetic, and plastic surgery services, skin care products, and related goods and services with three offices throughout the Northern California region.

The Complainant submits that it is the owner of and has used the trademark and service mark BERMAN SKIN INSTITUTE in trade since at least as early as August 20, 1995 and currently offers a range of goods and services under the BERMAN SKIN INSTITUTE mark including skin care products, hair services such as hair transplanting, body services such as liposuction and breast reduction, skin and face services such as laser hair removal and tattoo removal.

The Complainant submits that its principal and founder Dr. Berman and his colleagues have treated upwards of 60,000 patients and have made a profound impact on those patients’ lives and health. Many of the patients suffered from debilitating or life threatening diseases, or skin conditions that inhibited their professional, social, and personal lives. The Complainant submits that its services have improved patients’ lives, greatly increased their standard of living, and reduced the negative effects that often accompany outwardly noticeable skin conditions. For example, these products are used to reduce the harmful effects of acne, prevent actinic keratosis and cancerous skin spots, and improve clients’ skin texture and tone.

The Complainant submits that it has also sold a substantial amount of high-quality products under the BERMAN SKIN INSTITUTE mark through its three offices, its online store, and various other retailers; that clients and consumers in general have come to expect a high quality product under the BERMAN SKIN INSTITUTE mark; and that it has thereby acquired substantial goodwill in its mark.

The Complainant submits that it has a strong, established web presence and directly interacts with its cutomers through its websites established at its two Internet domain names at <bermanmd.com> and <bermanskin.com> as well as its Facebook page. Through such forums the Complainant promotes its goods and services, offers various informational packets and a DVD relating to its services, allows patients to schedule appointments, and learn more about the Complainant’s doctors and staff.

The Complainant further submits that it also promotes the BERMAN SKIN INSTITUTE mark through numerous national and local television shows. Its principal and founder Dr. Berman regularly promotes the Complainant’s goods and services through various media outlets and has been featured on national television channels such as the History Channel, the Live Well Network, the Discovery Channel, and the TLC network, ABC news affiliates as well as countless nationwide magazines and other publications such as Figure magazine, USA Today, the San Jose Mercury newspaper, and Baby Talk magazine.

The Complainant submits that it has the above-mentioned pending United States federal trademark application for the BERMAN SKIN INSTITUTE mark (85/523300) that was filed on January 23, 2012 (showing a claimed first use in commerce of August 20, 1995) for the following goods and services: non-medicated skin care preparations and cosmetic sunscreen preparations in Class 3; medicated skin care preparations and medicated sunscreen in Class 5; and dermatology services, cosmetic skin care services, medical skin care services, cosmetic and plastic surgery services, and skin care salon services in Class 44.

The Complainant argues that it has developed strong common law rights and international renown by extensively using the BERMAN SKIN INSTITUTE mark on its goods and services for over fourteen years and heavily marketing the brand throughout the world. The Complainant claims to have provided its products and services under the BERMAN SKIN INSTITUTE mark for almost two decades to more than 50,000 patients. Additionally, the Complainant submits that it has developed an outstanding reputation for quality services as demonstrated by some of the industry accolades it received. The Complainant submits that it is therefore entitled to rely on its longstanding common law rights in the BERMAN SKIN INSTITUTE mark in this Complaint and it does not require a trademark registration per se to succeed under the Policy. The Complainant refers to decisions of numerous panels that have accepted that common law trademark rights receive protection under the Policy and that a complainant need not necessarily assert a registered trademark. CavinKare Private Limited v. LaPorte Holdings, Inc. and Horoshiy, Inc., WIPO Case No. D2004-1072 (summarizing cases so finding and stating “numerous panels, including this one, when faced with unregistered marks, have upheld their protectable status in the United States under the Policy”). The Complainant submits that a company or person acquires common law trademark protection for a name when it is used to indicate the source of commercial goods or services and the mark becomes distinctive of that source. See, Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540 (citing to numerous cases providing protection for names used in connection with a commercial good or service); Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874 (finding an author’s name gained common law trademark when used in connection with books and other artistic productions).

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s BERMAN SKIN INSTITUTE trademark and service mark. The Complainant argues that the disputed domain name consists entirely of the Complainant’s BERMAN SKIN INSTITUTE trademark with the addition of the generic top-level domain (gTLD) suffix “.com.”. As such, there can be no dispute that the disputed domain name is identical to the Complainant’s BERMAN SKIN INSTITUTE trademark in all material respects and that there is an obvious likelihood of confusion between the disputed domain name and the Complainant’s trademark. Belupo d.d. v. Wachem d.o.o, WIPO Case No. D2004-0110 (finding likelihood of confusion between BELUPO trademark and the <belupo.com> domain name with minimal discussion); Deutsche Telekom AG v. Dexcom Holdings B.V., WIPO Case No. DTV2006-0001 (“It is a principal which applies to UDRP Cases, that the addition of a TLD does not affect the confusing similarity or identity between the domain name and the trademark; this principle was repeated by previous panels with respect to ccTLD and gTLD.”). Accordingly, the Complainant argues that the disputed domain name is identical, and clearly confusingly similar, to the Complainant’s BERMAN SKIN INSTITUTE trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant submits that it bears a “light burden” of alleging and providing supporting evidence of the Respondent’s lack of rights or legitimate interests in the disputed domain name because “it is difficult to prove a negative” and the Respondent is “best placed” to possess such evidence citing Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Complainant submits that it is required to make out a prima facie showing that the Respondent lacks any rights or legitimate interests after which the burden of proof shifts to the Respondent.

The Complainant asks this Panel to note that a respondent may possess rights or legitimate interests in a domain name if it can show: (1) a bona fide use or demonstrable preparations to use the domain name to offer goods and services before the filing of a complaint; (2) others commonly know the respondent by the domain name; or (3) legitimate noncommercial or fair use of the domain name without intent for commercial gain through misleadingly diverting consumers or tarnishing complainant’s trademark.

The Complainant submits that in the present Complaint the Respondent cannot claim any rights or legitimate interests in the disputed domain name because the Respondent never received the Complainant’s authorization to use its mark, nor did it enter into any relationship with the Complainant. The Complainant states that it never licensed or otherwise permitted the Respondent to use the BERMAN SKIN INSTITUTE mark or to register any domain name including the mark. The Complainant asserts that there is no relationship between the parties and that the Respondent registered the disputed domain name without the Complainant’s authorization, knowledge, or consent. See, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393 (finding no rights or legitimate interests in part because the complainant gave “no authorization” to use its mark in the domain name and “there exists no connection between the Parties”); Sepracor Inc. v. graphicsmachine.com, WIPO Case No. D2007-0646 (finding no rights or legitimate interests in part because “complainant and respondent do not have any relationship” and complainant “never licensed or permitted respondent to use” complainant’s mark); Sepracor Inc. v. N/A Nadegda Vandar, WIPO Case No. D2010-0081 (accepting “complainant’s submission that it has never licensed or authorised the respondent to use its mark LUNESTA”).

The Complainant submits that absent such a relationship with the Complainant, the Respondent cannot claim any rights in the disputed domain name because “mere registration does not establish rights or legitimate interests in the disputed domain name so as to avoid the application of… the Policy.” Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134; Sepracor Inc. v. N/A Nadegda Vandar, WIPO Case No. D2010-0081 (finding respondent gained no rights in the <lunestaeszopiclone.com> domain name by mere usage). Similarly, the Respondent’s contact, administrative, and technical information from the Registrar’s WhoIs service does not reveal any rights or legitimate interests in the disputed domain name or in any way indicate that the Respondent is commonly known by the disputed domain name.

Finally, the Complainant submits that the Respondent is not making a bona fide offering of goods and services through the website, or fair use of the disputed domain name. Rather, the Complainant alleges that the Respondent uses the disputed domain name to misleadingly divert consumers by redirecting visitors to various other websites that sell skincare products or services, such as <freeonlineboard.com>, <bodywashforacne.com>, <designerbeauty-products.com>, <acnenomore.com>. Not only do these websites sell skincare products and services, but many of them are in direct competition with the Complainant to sell acne solutions, skin rejuvenation products, or cures for skin conditions. Additionally, the Respondent also redirects Internet users to various other websites not related to skincare products or services, such as <soprano.com>, where numerous links are provided to “free stuff” and Internet users are enticed to click through to another third party website.

The Complainant submits that while the exact relationship between the Respondent and these websites remains unclear, the Respondent’s redirecting of Internet users to related and competing websites clearly indicates a commercial purpose to gain revenues by misleadingly diverting consumers to a third party’s website to purchase similar or competing goods and services. See, e.g., Sanofi-Aventis, Aventis Pharma S.A., Merrell Pharmaceuticals Inc. v. George Breboeuf, WIPO Case No. D2005-1345 (finding respondent had no rights or legitimate interests in a domain name because the domain name contained complainant’s trademark and linked to another site that sold competing drugs); Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No.D2008-1393 (finding the use of a domain name that is identical or confusingly similar to complainant’s mark to “divert” Internet users to “other commercial sites does not confer rights or legitimate interests on the respondent”). Similarly, the Panel should “infer” that the Respondent is “likely receiving some pecuniary benefit” from “directing traffic” to the other non-skincare related, third party websites. The Bear Stearns Cos. Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (inferring that “Respondent is likely receiving some pecuniary benefit” from “directing traffic” to a third party site). Therefore, the Respondent possesses no rights or legitimate interests in the disputed domain name because it has no relationship with the Complainant and its use of the disputed domain name evidences a clear intent to commercially gain by misleading Internet consumers.

The Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith because it knew or should have known of the Complainant’s rights to the BERMAN SKIN INSTITUTE mark, and is actively using the disputed domain name to intentionally attract and misleadingly divert Internet users to competing websites.

The Complainant argues that it is difficult to imagine that the Respondent did not know of the Complainant’s BERMAN SKIN INSTITUTE mark when registering the disputed domain name, since it is identical to the Complainant’s mark, the mark is well-known, and the Respondent uses it to link to websites offering competing products and services. As discussed in detail above, the Complainant has developed the BERMAN SKIN INSTITUTE into a well-known mark throughout the world through prodigious use and extensive marketing. See, The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113 (finding respondent acted in bad faith, “even without considering other elements,” when it registered a domain name containing “well-known trademarks” based on the “complainant’s worldwide reputation and presence on the Internet”). Similarly, the mark contains Dr. Berman’s name and the Respondent most likely cannot offer any “explanation” for “his motive” in choosing to use a mark that contains another person’s name. See, SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092 (finding knowledge of complainant’s mark because it was well-known and strong and respondent failed to provide “a reasonable explanation for adopting” the mark in the domain name). Rather, the Complainant alleges that the Respondent’s only apparent motive for using the mark is to commercially benefit by re-directing confused Internet users to third party websites that offer competing goods and services. See, Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517 (finding bad faith registration and use because respondent’s website linked to other websites that provided services similar to complainant’s services). The Complainant argues that redirecting consumers to competitive websites is a clear indicator that the Respondent knows and is familiar with the Complainant’s mark and the goods and services offered thereunder, and that the Respondent registered the disputed domain name in bad faith for commercial gain.

The Complainant further argues that beyond its bad faith registration of the disputed domain name, the Respondent’s use demonstrates bad faith because it redirects consumers to competitors’ websites in an attempt to intentionally attract, for commercial gain, Internet users to these websites by creating a likelihood of confusion with the Complainant’s BERMAN SKIN INSTITUTE mark as to the source, sponsorship, affiliation, and endorsement of the websites and products and services provided therein. Specifically, the Respondent’s website redirects Internet users to various websites, many of which sell competitive skincare products or services. The Complainant argues that thus the Respondent uses the disputed domain name to create confusion among consumers who are looking for the Complainant’s famous skincare products and services and then reaps commercial gain from this confusion by redirecting them to competitors’ websites. See, Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517 (finding bad faith registration and use because respondent’s website linked to other websites that provided services similar to complainants); NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (finding bad faith use of a domain name used to “re-direct Internet users to websites of competing organizations” and citing to numerous other cases holding the same).

Additionally, Dr. Berman’s frequent appearances on national television and various Internet broadcasts on the Complainant’s and others’ websites greatly increases the chances of consumer confusion. After a potential consumer views a video and learns about the Complainant’s goods and services, they will most likely type “www.bermanskininstitute.com” into their web browser in pursuit of additional knowledge and recommended products. However, instead of finding the Complainant’s website, consumers are redirected by the Respondent to another website offering similar or possibly unrelated, goods and services. Thus, the consumer will most likely become confused as to the Complainant’s sponsorship, affiliation, or endorsement of the website. See, Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517 (finding respondent’s linking to other websites “indicates a deliberate attempt to capture internet users into believing that those sites are in some way associated with, authorized, or connected to complainant.”).

The Complainant submits that the likelihood of confusion created by the Respondent is not diminished by the fact that users are redirected to third-party websites with no obvious connection to the Complainant because the Respondent and these third-party websites still gain “website traffic from the establishment of the link.” Jardine Motors Group Holdings Limited v. Zung Fu Kuen, WIPO Case No. D2004-0168. Similarly, the Panel should “infer” that the Respondent is “likely receiving some pecuniary benefit” from “directing traffic” to the other non-skincare related, third party websites. The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (inferring that “Respondent is likely receiving some pecuniary benefit” from “directing traffic” to a third party website).

In Supplemental Submissions the Complainant repeats that its ownership and use of the BERMAN SKIN INSTITUTE trademark substantially predates the Respondent’s acquisition of the disputed domain name. The Complainant submits that acquisition of a domain name from another constitutes a “registration” of the domain name for determining a respondent’s rights in the domain name or bad faith registration or use of the domain name. See, e.g., MC Enterprises v. Mark Segal (Namegiant.com), WIPO Case No. D2005-1270 (“The Respondent is not the original registrant of the subject domain name, but for the purposes of the Policy, his acquisition of the subject domain name constitutes registration.”); Mamas & Papas (Holdings) Limited, Mamas & Papas (Retail) Limited v. QTK Internet/Name Proxy, WIPO Case No. D2004-0496 (“the term ‘registration’ extends beyond the original act of registration and covers subsequent acquisitions of the domain name… and there are several prior Panel decisions in which it has been held more generally that ‘registration’ extends to subsequent acts of acquisition”).

The Complainant repeats that it owns and has used the BERMAN SKIN INSTITUTE trade and service marks since at least as early as August 20, 1995 for dermatology, cosmetic, and plastic surgery services, skin care products, and related goods and services. The Complainant asserts that it has been acquiring common law rights in the BERMAN SKIN INSTITUTE trademark for over a decade, and those rights substantially predate the Respondent’s acquisition and use of the disputed domain name. The Complainant further asserts that it has continuously promoted its goods and services under this trademark via the Internet since at least December 12, 1998. In this regard the Complainant refers to various screen captures of the Complainant’s website dating back to 1998 that are annexed to the Supplemental Submissions. The Complainant refers to historical screen captures of the website hosted at the disputed domain name from Domain Tools and the Internet Archive services. Both companies routinely capture the contents of various websites and store this information for future use.

The Complainant submits that in contrast to the Complainant’s long-standing rights, the Respondent acquired the disputed domain name on or around September 25, 2009. In this regard the Complainant refers to a WhoIs history that has been submitted as an Annex to the Complaint.

As both registrants masked their true identity with a privacy service, it is feasible that the Respondent merely transferred the disputed domain name from one registrar to another through this 2009 transaction and had actually acquired the disputed domain name earlier. However, even assuming such a one-person transfer would have occurred, the Complainant’s use and ownership of the BERMAN SKIN INSTITUTE mark still predates the earliest date on which the Respondent could have acquired the disputed domain name as the previous owner of the disputed domain name (Web Advertising Corp.) acquired the disputed domain name on or around November 4, 2007, which was long after the Complainant’s documented use of its mark.

The Complainant submits that therefore, the Respondent has registered and is using the disputed domain name in bad faith because it actively exploits its knowledge of the mark to attract, divert, and confuse consumers for commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its application paragraph 4(a) of the Policy places on the Complainant the onus of proving that:

(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 is being used in bad faith.

A. Identical or Confusingly Similar

On the evidence before this Panel, the Complainant carries on an established business in the State of California and on the Internet under the style and title Berman Skin Institute. This Panel is satisfied on the evidence before it that the Complainant has acquired a substantial goodwill and rights at common law for its BERMAN SKIN INSTITUTE trademark and service mark which it uses to distinguish its dermatological and surgical services, skin care products, and related goods.

The disputed domain name is identical to the Complainant’s BERMAN SKIN INSTITUTE trademark. It is well established under the Policy that this Panel may ignore the gTLD “.com” domain name extension when making the comparison between the disputed domain name and the trademark relied upon by the Complainant to ground its Complaint.

The Complainant has therefore succeeded in proving the first element of the test in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

This Panel accepts the Complainant’s submission that once the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of proof shifts to the Respondent to prove that it has such rights or legitimate interests.

The Complainant has furnished evidence that it is the owner of the, as yet unregistered trademark BERMAN SKIN INSTITUTE; that it never granted the Respondent any right to use the disputed domain name; that it has no connection with the disputed domain name registration or the Respondent; that the Respondent is using the disputed domain name to promote the sale of competing products.

The Respondent has not filed any formal Response and has thereby failed to discharge the burden of proof to establish that it has rights or legitimate interest in the disputed domain name

The Complainant is therefore entitled to succeed in the second element of the test under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Bad Faith Registration

The Complainant claims that it owns and has used the BERMAN SKIN INSTITUTE trade and service marks since at least as early as August 20, 1995 for dermatology, cosmetic, and plastic surgery services, skin care products, and related goods and services. While the Complainant has not adduced any evidence of use of the trademark as early as 1995, on the evidence before this Panel, the Complainant had an established Internet presence as of December 12, 1988.

According to the WhoIs information on file, the disputed domain name was created on November 22, 2005 and it would appear that the Respondent acquired the disputed domain name on or around September 25, 2009.

The Complainant’s trademark and the identical domain name are composed of a combination of a family name and the descriptive words “skin” and “institute”. While the words “skin” and “institute” are descriptive, in combination with the family name “Berman” they create a distinctive trademark that refers to the Complainant’s business. On the evidence the Respondent has no rights or legitimate interests in the disputed domain name and there is no explanation as to why the disputed domain name was chosen and registered. In the circumstances this Panel must conclude that the disputed domain name was chosen and registered to refer to and to take predatory advantage of the Complainant’s goodwill in its business name and common law trademark. The use to which the disputed domain name has been subsequently put, to direct Internet users to websites promoting products that compete with the Complainant, supports this conclusion.

Furthermore, the Respondent has sought to cloak its identity with an anonymous registration. While this is not objectionable in itself, it is also notable that the Center has consequently experienced difficulty in making contact with the Respondent notwithstanding that the Center sent emails to the addresses in the WhoIs and at the website to which the disputed domain name resolved at the time of filing of the Complaint and the courier could not effect physical service of the proceedings at the Respondent’s postal address. Additionally the Respondent has failed to deliver a Response or any subsequent reply to the Additional Statement filed by the Complainant. Taken together these factors indicate that that the Respondent has quite probably furnished false registration information that there may not in fact be any underlying registrant beyond the WhoIs-listed entity “Private Whois” of Grand Cayman.

This Panel therefore finds that on the balance of probabilities the disputed domain name was registered in bad faith.

For completeness, the Complainant’s very recent application for a United States federal trademark application for the BERMAN SKIN INSTITUTE mark (85/523300) on January 23, 2012 does not assist its case in relation to its allegations that the disputed domain name was registered in bad faith.

Bad Faith Use

On the evidence, the disputed domain name is being used by the Respondent to direct Internet users to websites promoting products that compete with the Complainant. It is probable that the Respondent has arranged for this to happen for some commercial purpose. In the absence of any explanation it is most probable therefore that the Respondent intentionally attempted to attract, for commercial gain, Internet users to these online locations, by creating a likelihood of confusion with and taking predatory, bad faith advantage of the Complainant’s mark and goodwill. It follows that the disputed domain name has been used in bad faith.

The Complainant has therefore also satisfied the third element of the test in paragraph 4(a) or the Policy and is entitled to succeed in this Complaint.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bermanskininstitute.com> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Dated: July 20, 2012

 

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