WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vita-Cos-Med Klett-Loch GmbH v. Perfect Privacy, LLC / MVB & Associates, Inc. and Theresa Wainright
Case No. D2014-0978
1. The Parties
The Complainant is Vita-Cos-Med Klett-Loch GmbH of Eisenberg, Germany, represented by Anderson & Associates, United States of America (“US”).
The Respondents are Perfect Privacy, LLC of Jacksonville, Florida, US / MVB & Associates, Inc. of Helen, Georgia, US, and Theresa Wainright of Helen Georgia, US.
2. The Domain Names and Registrar
The disputed domain names <phytoskin.com>, <thymrevit.com>, <thymuskin.com>, <thymu-skin.info> and <thymuskinshampoo.com> are registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 11, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondents as the registrant and providing 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 Respondents of the Complaint, and the proceedings commenced on June 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 7, 2014.
The Center appointed James A. Barker as the sole panelist in this matter on July 9, 2014. 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 July 23, 2014 (with a correction issued on July 24, 2014), the Panel issued an order for further information from the Complainant and the Registrar. The Complainant was requested to provide a copy of the distribution agreement with Biotechne (the “Agreement”), and to clarify the year in which it first became aware of the Respondent’s registration of the disputed domain names. The Registrar was requested to confirm the dates on which the disputed domain names were registered to the Respondents. The Respondents were requested to indicate whether they wished to file a reply to any further information submitted by the Complainant and the Registrar. The due date for decision was extended until August 1, 2014.
The Complainant filed its submission in response to the Panel Order No.1 on July 28. No communication was received from the Respondent. Information was also received from the Registrar. That information confirmed the dates on which the registration of the disputed domain names was transferred to or first initiated with the Registrar by the Respondent.
To seek to confirm whether the Registrar could confirm the date on which the disputed domain names were registered to the Respondents, the Panel requested further information from the Registrar on July 31, 2014 and extended the due date for decision until August 5, 2014.
4. Factual Background
According to the WhoIs details, the first and second Respondents (MVB & Associates, Inc., and Theresa Wainright) have the same addresses in Georgia and Pennsylvania. For convenience, and unless otherwise indicated, the Panel has further referred to both Respondents as simply “the Respondent” in this decision.
The disputed domain names <thymuskin.com>, <thymuskinshampoo.com>, <thymrevit.com> and <phytoskin.com> are registered to the first Respondent. The disputed domain name <thymu-skin.info> is registered to the second Respondent (with the first Respondent listed as the “registrant organization”).
Shortly before the Complaint was filed, four of the disputed domain names reverted to websites which were stated to be “under construction”. The other disputed domain name <phytoskin.com> reverted to a website which was also stated to be “under construction”, but which contained links to various subjects associated with skin care products.
The Complainant is part of the Klett-Loch group of companies, and has been a manufacturer of cosmetic, dermatological and dietary supplement substances for more than 25 years.
The Complainant is the owner (as part of the Klett-Loch group of companies) of a number of registered marks, including:
- THYMUSKIN. The Complainant also owns marks which are variants of this one. These include THYMU SKIN GKL and THYMU-SKIN. The earliest of these marks date from 1991 registered in a number of countries including on the principal register of the United States Patent and Trademark Office (the “USPTO”) since 1997. This mark has been widely used in association with shampoo and hair preparations manufactured and sold in Germany by the Complainant and its authorized distributors.
- PHYTOSKIN. This mark was registered as early as 1991 in Germany. The Complainant has used this mark in connection with dermatological skin care products manufactured in Germany by the Complainant and sold by it and its authorized distributors worldwide.
- THYMREVIT. The Complainant says that it has maintained this registration since 1991 in Germany. The Complainant has used this mark in connection with its “Thymrevit Revitalizing Capsules”.
Other than its mark registered with the USPTO, the Complainant did not provide direct evidence of its trademark registrations. Rather, the Complainant provided a summary table of its various registered marks. The Complaint attached a declaration of its Director of sales and marketing which also refers to the Complainant’s use of the marks mentioned above.
On May 2, 2014, the Complainant sent a “cease and desist” letter to the Respondent demanding the transfer of the disputed domain names, and other domain names registered by the Respondent but not in dispute in this particular proceeding.
As confirmed by the Registrar to the Center, the disputed domain names had the following “creation date”: <thymuskin.com> was created in January 2000; <thymuskinshampoo.com> was created in February 2001; <thymu-skin.info> was created in December 2001; <thymrevit.com> was created in January 2008; <phytoskin.com> was created in December 2003. The Complainant states that the disputed domain names were registered by the Respondent after entering into the Agreement in 2002 – which would suggest that at least three of those disputed domain names may have been first created by someone other than the Respondent. This fact is not contested by the Respondent.
In response to the Panel Order No.1, the Registrar confirmed that the disputed domain name registration services were initiated with it on the following dates:
<thymuskin.com> in October 2000;
<thymuskinshampoo.com> in July 2004;
<thymu-skin.info> in December 2001;
<thymrevit.com> in March 2010;
<phytoskin.com> in June 2004.
In Response to the Center’s request for clarification, the Registrar stated that each of these disputed domain names was transferred to it from another registrar “under the MVB & Associates Inc./Theresa Wainwright account and has remained in that account to present date.”
At the Panel’s request, the Center further requested the Registrar to clarify discrepancies between the further information that was received from the Registrar, and the public WhoIs record, as provided by the Complainant. This discrepancy is illustrated by reference to the disputed domain name <thymuskin.com>. While the information from the Registrar indicated that this domain name was transferred to NetworkSolutions.com in October 2002 under “MVB & Associates Inc. / Theresa Wainwright”, the public WhoIs history indicated the following registrant history:
WhoIs Record Date
March 12, 2003
GMS CORP (THYMUSKIN2-DOM)
November 20, 2003
GMS CORP (THYMUSKIN2-DOM)
October 24, 2006
Biotechne Complex, Inc.
May 16, 2013
Biotechne Complex, Inc.
September 19, 2013
Biotechne Complex, Inc.
November 16, 2013
MVB & Associates, Inc.
The Registrar ultimately was not able to identify the exact dates on which the disputed domain names were first registered to the Respondent at the time of this decision.
The Complainant, in response to the Panel Order No.1, states that Biotechne was known by the Complainant to have registered <thymuskin.com> from a date after October 2006 until November 2013. The Complainant stated that, after repeated demands to Biotechne to transfer to the disputed domain names to the Complainant, this disputed domain name was transferred to MVB & Associates in November 2013.
Further, the Complainant restated that “Jan Koerting attested that the Complainant was aware that at some time after the Complainant entered the Agreement, Biotechne had used the <thymuskin.com> domain name to sell the Complainant’s products.” The Complainant also stated that <thymuskin.com> was transferred from Biotechne to MVB & Associates in November 2013. In 2003, the WhoIs record identified the registrant as GMS Corp of Fort Lauderdale, United States of America.
In relation to the other disputed domain names, the Complainant stated that it was not until April 2014 that it had become aware that anyone (including Biotechne or the Respondent) had registered them.
5. Parties’ Contentions
The Complainant says that each of the disputed domain names are identical or confusingly similar to its registered marks, because these marks are wholly incorporated in those domain names.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain names. It says that the Respondent has not been known by the disputed domain names and has not been authorized to register any domain name corresponding to its marks. The Respondent is a former licensed distributor of the Complainant’s products (through a company called Biotechne Complex, Inc.) whose authorization has been terminated. In that capacity, according to the Complaint, the Respondent was entitled to use the Complainant’s marks. The Panel has inferred (it is not entirely clear in the Complaint) that the Respondent was not authorized as such to register the Complainant’s marks in a domain name despite that entitlement to use the Complainant’s marks. This is consistent with statements in the declaration by the Complainant’s Director of Sales and Marketing (referenced further below).
The letter refers to an Agreement with Biotechne Complex, Inc. (further referred to as “Biotechne” in this decision) but that Agreement was not attached to the copy of the letter included in the Complaint. The Complainant states that this Agreement was entered in 2002. Biotechne is a Georgia corporation, owned and operated by the second Respondent and her husband. This Agreement gave Biotechne distribution rights limited to the US and Canada for the Complainant’s hair and skin care products with the marks THYMU SKIN and THYMU SKIN GKL. After the parties entered the Agreement, the Respondent registered the disputed domain name <thymuskin.com> to sell the Complainant’s products, subject to annual sales targets. According to the Complaint, the Agreement provided that, in the event that it was terminated, all rights in the THYMU SKIN mark immediately were to revert to the Complainant and Biotechne was to execute all documents necessary to transfer the THYMU SKIN mark back to the Complainant. The Agreement also required Biotechne not to share in another enterprise or establish another enterprise that competes with the Complainant’s products.
This Agreement was renewed annually from 2006. Over time, the Respondent failed to meet its obligations under the Agreement, and, in July 2013 the Complainant served a notice of termination on Biotechne and the second Respondent. The Respondent refused to transfer to the disputed domain name <thymuskin.com> and in January 2014 demanded that the Complainant pay USD 130,000 for the Respondent to relinquish that domain name.
The Complainant says that, without the express authority of the relevant trademark holder, a right to resell or distribute a trademark holder’s products does not create a right to use a domain name that is identical, confusingly similar, or otherwise wholly incorporates the relevant trademark. Since February 2014, the Respondent has “trafficked” in the disputed domain names and has attempted to sell one or more of them to third parties. Inasmuch as the Respondent is not making any bona fide offering of any goods or services at any website associated with the disputed domain names, the Complainant says that the Respondent has no right or legitimate interest in them. The Complainant refers to the factors set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 in relation to the issue of whether a distributor may have rights or legitimate interests in a disputed domain name.
The Complainant says that the Respondent “has engaged in nearly every type of bad faith as described in the Policy.” The Respondent has demanded that the Complainant pay USD 130,000 for the Respondent to “relinquish all internet activity” relating to some of the disputed domain names, and others. When the Complainant refused that demand, the Respondent attempted to sell some of the disputed domain names to another of the Complainant’s distributors, and did so (says the Complainant) while misrepresenting several material facts. The Complainant says that the disputed domain names have been registered (and renewed) primarily for the purpose of selling the disputed domain names to the Complainant and/or another distributor of the Complainant’s products, for valuable consideration well in excess of the Respondent’s out of pocket costs.
The Complainant says that the Respondent has registered other domain names that incorporate its mark, that are not the subject of the dispute in these proceedings. The Complainant says that this is evidence of bad faith.
The declaration by its Director of Sales and Marketing states that the second Respondent is known by the Complainant to be an officer of Biotechne, and that MVB & Associates, Inc. is a fictitious name used by Biotechne and the second Respondent and/or is an unregistered entity name that is controlled by Biotechne or the second Respondent. The Complainant states that Biotechne and/or the second Respondent is the beneficial owner of the disputed domain names. That declaration says that, in April 2014, the Complainant’s legal counsel provided a report which revealed that, without the Complainant’s knowledge or authorization, the Respondent had registered the disputed domain names (among others). The declaration says that no party was ever authorized to register those domain names.
The Complainant says that, since February 2014, each of the disputed domain names have displayed an “under construction” notice and have not been used in connection with the Complainant’s products. The declaration of the Complainant’s Director of Sales and Marketing further states that much of the prior interactive website at the disputed domain name <thymuskin.com> is accessible by links that are still visible by search engines. The website at <phytoskin.com> also contained (at May 21, 2014) links to products sold by the Complainant’s competitors. The websites at the other disputed domain names contain no active links, but state that “[t]his website is currently under construction, a new and improved site will be available soon. Call […] to order products”.
The Respondent did not reply to the Complainant’s contentions, nor make any communication in response to the Panel Order issued in this case.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names were registered and are being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below, immediately following a consideration of who is the proper Respondent in this case and the date on which the disputed domain names were registered to the Respondent.
A. Identity of the Respondent
Paragraph 1 of the Rules provides that the Respondent means “the holder of a domain-name registration against which a complaint is initiated.” This requires the Panel to identify the actual “holder” of the domain name registration. This is more than a procedural exercise. This is because the substance of the Complaint proceeds on the basis that Theresa Wainright and Biotechne Complex, Inc. are the underlying registrants of all of the disputed domain names.
There are four entities in this case that could, together or alternatively, be considered to be registrant of one or more of the disputed domain names:
- MVB & Associates Inc. which is the named registrant of three of the disputed domain names;
- Theresa Wainright (listed as the “registrant name”) and MVB & Associates Inc. (as the “registrant organization”) in relation to <thymu-skin.info>;
- Perfect Privacy LLC (as the “registrant name”) and MVB & Associates Inc. (as the “registrant organization”) in relation to <phytoskin.com> as verified by the Registrar. These details are different to the WhoIs details annexed to the Complaint, which indicated that MVB & Associates Inc., was both the registrant name and the registrant organization for this domain name.
- Biotechne Complex, Inc. (Biotechne), which the Complainant indicated, is a previous registrant of the disputed domain names and an entity which was associated with the named Respondent, Theresa Wainright.
The difference between the “registrant name” and “registrant organization” in the WhoIs record is sometimes an arbitrary one – reflecting the preferences of the registrant. Ultimately, as noted above, the role of the Panel is to identify the actual holder of the domain name registration, which may not necessarily be the same as the person or entity identified as the “registrant name” or “registrant organization” in the WhoIs details if the evidence so indicates.
Beyond its name appearing in the WhoIs record, there is no evidence that MVB & Associates is an entity in fact. The Complainant avers that MVB & Associates is a false name for an entity that does not exist, and refers to searches it has undertaken of the State Corporation databases of both Georgia and Pennsylvania (the listed addresses of the Respondent), which do not contain a record for any such entity.
The Panel has inferred that Perfect Privacy LLC. is merely a privacy service used to register <phytoskin.com>. As such, the Panel has not considered the role of this entity further and has treated MVB & Associates as the named registrant for <phytoskin.com>.
There is no dispute that Theresa Wainright is an officer of Biotechne. The Complainant argues that Theresa Wainright and/or Biotechne is the beneficial owner of all of the disputed domain names. The Complainant provided evidence of having a previous commercial relationship with Biotechne for the distribution and sale of its products.
In the absence of contrary evidence, the Panel has accepted that both Theresa Wainright and Biotechne are, together, the underlying registrants of all of the disputed domain names and, as such, the proper Respondent. The previous commercial relationship between the Complainant and Biotechne related to the sale of the Complainant’s products. There is no dispute that the domain names were registered by the Respondent in this connection.
B. Date of registration
A second threshold issue relates to the date the domain names were registered to the Respondent. The Panel has considered this issue separately to the grounds below, as it is potentially relevant to both the issue of whether the Respondent has rights or legitimate interests (paragraph 4(a)(ii) of the Policy) and bad faith (paragraph 4(a)(iii) of the Policy).
As noted further above, the initial confirmation from the Registrar provided the “creation date” for each of the disputed domain names. This confirmation did not identify the point at which the Respondent registered the domain names. Accordingly, the Panel issued a request for further information. In response to that request, the Registrar was not able to identify the dates on which the disputed domain names were first registered to the Respondent, but identified that the domain names were transferred to it variously between 2000 and 2010.
Also as noted above, the public WhoIs history for <thymuskin.com> provided by the Complainant suggests that it was registered to Biotechne in 2006 and, later in 2013, in the name of MVB & Associates.
Additionally, the WhoIs details provided by the Complainant also alludes to the fact that the disputed domain name <thymu-skin.info> was transferred to Theresa Wainright / MVB & Associates in November 2013.
The evidence in this case does not allow the Panel to identify clearly when the disputed domain names were registered (in fact) to the Respondent, Theresa Wainright and Biotechne. The preponderance of the evidence is suggestive that the disputed domain name <thymuskin.com> was registered to Biotechne in 2006. There is no clear evidence that the other disputed domain names were registered to the Respondent before 2013. In the absence of such clear evidence, the Panel has inferred that these registrations all coincided in November 2013, consistent with the changes for the registrations of <thymuskin.com> and <thymu-skin.info>. To the extent that the Panel has found that Theresa Wainright / Biotechne are the underlying registrants, this change in registrant details indicates that the Respondent was the underlying controller of the domain name registrations around that time.
C. Identical or Confusingly Similar
The Complainant has stated that it has registered rights in its various marks, although direct evidence (of a registration certificate from the USPTO) was provided only for its THYMUSKIN mark which was registered in 1997. For its other marks, the Complainant relies only on the declaration provided by its Director of Sales and Marketing.
While the Complainant states that it has these registrations, the only direct evidence it provided (for its THYMUSKIN mark) indicated that the ownership of that mark is held by Thymu-skin Cosmetic Produktions-Und Vertriebsgesellschaft, Klett-Loch Gmbh. The other marks relied on are registered in the name of Lore M. Klett-Loch, GKL-Biotec AG, L & C Klett-Loch Gmbh. The Complainant provided little evidence of its direct rights to bring the Complaint on behalf of these entities.
But the Panel is otherwise prepared to accept that the Complainant has the trademark rights that it claims, at least based on its claimed relationship with other companies in the Klett-Loch group of companies. The Complainant provided a list of an extensive trademark portfolio. Its rights in these marks are not contested and, in part, appear to be the basis on which it previously had a commercial relationship with the Respondent (although in the name of “Thymu-skin Cosmetic”). The Complainant has also provided evidence of that commercial relationship (the Agreement).
The next issue is whether the disputed domain names are identical or confusingly similar to those marks. In considering this question it is well established that the generic Top-Level Domain extension is to be disregarded.
All of the disputed domain names wholly incorporate one of the Complainant’s registered marks. In numerous cases, it has been held that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No. D2008-1338.
The disputed domain name <thymuskin.com> wholly incorporates the Complainant’s THYMUSKIN mark and, as such, is identical to it. Being identical, it is unnecessary for the Panel to consider whether it is also confusingly similar.
The disputed domain name <thymu-skin.info> also wholly incorporates the Complainant’s mark, with the only difference being the insertion of a hyphen. The insertion of a hyphen is a trivial difference – phonetically, visually, and in overall impression. The Panel finds that this domain name is also relevantly identical to the Complainant’s mark.
The disputed domain name <thymuskinshampoo.com> wholly incorporates the Complainant’s THYMUSKIN mark, with the addition of the descriptive term “shampoo”. The addition of the descriptive word does little to distinguish the Complainant’s mark. As such, the Panel considers that Internet users would likely be confused by the association between the disputed domain name and the Complainant’s mark. The descriptive word “shampoo” is obviously one relating to the Complainant’s products and, as such, is more likely to increase user confusion. See, e.g., Diageo Brands B.V., Diageo North America, Inc. and United Distillers Manufacturing, Inc. v. iVodka.com a.k.a. Alec Bargman, WIPO Case No. D2004-0627.
The disputed domain names <thymrevit.com> and <phytoskin.com> also wholly and identically incorporate the Complainant’s THYMREVIT and PHYTOSKIN marks respectively. As such, the Panel finds that these domain names are also relevantly identical to the Complainant’s marks.
For these reasons, the Panel finds that each of the disputed domain names are identical or confusingly similar to the Complainant’s marks.
D. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain names. This paragraph requires the Complainant to, at minimum, present a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. A prima face case is one which appears credible on its face. Once the Complainant has made a prima facie case, the burden of production shifts to the Respondent to refute it. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
While the facts of this dispute are convoluted, the Complainant in this case has mounted a credible case against the Respondent, and supported that case with evidence and argument. Essentially, the Complainant’s argument is based on the allegation that the Respondent was never authorized to register and use the disputed domain names. The Complainant also says that the former entity, Biotechne, has no rights or legitimate interests because whatever authorization Biotechne previously held has been terminated. In this connection, the Complainant refers to the WIPO Overview 2.0, paragraph 2.3 and the test of whether a reseller of a complainant’s products may have a right or legitimate interest in a related domain name. Following those tests, the Complainant says that the Respondent is not making a bona fide offering of goods and therefore has no rights or legitimate interests.
The Panel considers that the Complainant has established a prima facie case under paragraph 4(a)(ii) of the Policy. The Respondent has registered five domain names, each of which incorporates one of the Complainant’s marks, either entirely or with the addition of a descriptive term associated with the Complainant’s business. The Respondent is not using the disputed domain names, but each reverts to a website which states it is “under construction” which suggests that the Respondent may at least have an intent to use them in the future; no evidence is presented by the Respondent on this point however. There is no indication that the Respondent has been commonly known by any of the disputed domain names. The Complainant denies authorizing the Respondent to use its marks in connection with domain names. The Complainant states that the authorization previously granted to a company associated with the Respondent (Theresa Wainright) has been terminated and, in any event, did not allow for the registration of the disputed domain names.
The Respondent has submitted no reply to these allegations. As such, the Complainant’s prima facie case stands unchallenged. Nevertheless, the obligation of the Panel is to consider whether the Complainant has established its case, based on the available evidence.
Pursuant to paragraph 4(c) of the Policy, a respondent’s rights to or legitimate interests in the disputed domain names may be demonstrated by any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
While paragraph 4(c) of the Policy suggests that these are matters which may be shown by a respondent, that paragraph does not exclusively set out the ways in which rights or legitimate interests may be demonstrated. As such, the Panel has considered the evidence of those matters that may be derived from the case file.
There is no evidence that goes toward establishing the matters in paragraphs 4(c)(ii) or (iii).
The primary issue in this case is whether the Respondent, before notice of the dispute, had been using the disputed domain names in connection with a bona fide offering of goods or services, for the purpose of paragraph 4(c)(i) of the Policy. This issue arises because the Respondent (Theresa Wainright / Biotechne) was a distributor and reseller of the Complainant’s products and had entered into a distribution agreement with the Complainant in 2002 for that purpose. The Complainant addresses this issue directly in the Complaint – stating that the Respondent has no rights or legitimate interests because it is “not presently” making a bona fide offering of goods or services, and because any previous commercial relationship between them has been terminated. The Complainant also refers to the well-established tests in Oki Data Americas, Inc. v ASD, Inc., supra and implies that the Respondent does not meet those tests.
The disputed domain names were not being used in connection with active websites when the Complaint was filed. By itself, the Panel does not consider that this entirely answers the question in the Complainant’s favor, despite the Complainant’s implication that it does. Paragraph 4(c)(i) indicates that the Respondent’s conduct is to be considered at a point “before notice of the dispute”. There is nothing in that paragraph, or otherwise in the Policy, that requires a respondent to demonstrate present use of a disputed domain name when a complaint is filed.
The Respondent (Theresa Wainright / Biotechne) has previously been an authorized distributor of the Complainant’s goods. The question is whether the Respondent’s use of the disputed domain names in that connection was part of a bona fide offering. On balance, the Panel has found that it was not. The Respondent’s previous distributor relationship does not establish that it has made a relevant bona fide use in connection with the disputed domain names. This is because the Panel considers that the Respondent was not clearly authorized to register and use the disputed domain names for this purpose, for the following reasons.
Firstly, the Panel has considered whether the Respondent was explicitly authorized to register the disputed domain names. If there were an explicit agreement, the Respondent’s rights would be determined by the scope of that agreement.
The Panel has reviewed the Agreement provided by the Complainant in response to the Panel Order. Nothing in the Agreement explicitly addresses the issue of whether the Respondent had a right to register a domain name incorporating the Complainant’s marks. This Panel has previously found that a respondent may have no rights or legitimate interests where domain names were not explicitly the subject of any agreement between the parties and complainant did not acquiesce to registration of domain names. See BD Real Hotels, SA de C.V. v. Media Insights aka Media Insight, WIPO Case No. D2009-0958. See also Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, Westin Hotel Management L.P. v. Media Insight a/k/a Media Insights, WIPO Case No. D2010-0211.
Secondly, the Panel has considered whether the Respondent had implied rights, or an implied acquiescence from the Complainant, to register and use the domain names in connection with a distributorship arrangement.
For the disputed domain name <thymuskin.com>, the question of whether the Complainant acquiesced in the registration is not clear. The Complainant suggests that this domain name was registered to the Complainant (Biotechne) in 2006 and began use in 2007. In response to the Panel Order No.1, the Complainant did not clearly identify when it first became aware of the Biotechne’s registration of this domain name. If the Complainant was aware of it as early as 2006 or 2007, this may be suggestive that the Complainant tacitly consented to the registration and use by the Respondent, but only sought to complain after it terminated the Agreement in 2013. Both the Complaint and the further information filed by the Complainant are equivocal on this point. Taking into account these uncertainties, the conduct of the Respondent more generally (addressed further below in relation to bad faith), and the failure of the Respondent to reply, the Panel finds that the Complainant did not tacitly consent to the registration of <thymuskin.com>. Further, by not obtaining a clear consent, the Respondent must or should have been aware that its registration of the disputed domain name was at risk of being challenged by the Complainant.
For the remaining disputed domain names, the picture is more clear. The Complainant avers that it was not aware of these registrations until April 2014. The Panel also finds nothing in the Agreement between the parties that might have given the Respondent such rights.
In the absence of an explicit or implicit agreement to the contrary, the question is then whether the Respondent might have a right or legitimate interest as a distributor of the Complainant’s products, under the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., supra. These criteria have been applied in cases where there is a distribution agreement, no agreement, or an ambiguous agreement, about the registration of domain names that incorporate a complainant’s mark.
In Oki Data, the respondent was an authorized reseller of the complainant, and registered the domain name <okidataparts.com>, which incorporated the complainant manufacturer’s OKIDATA trademark. The panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by such an authorized dealer or reseller could be deemed a “bona fide offering of goods or services” within the meaning of the Policy if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
In this case, there is evidence that at least the first of these tests is not satisfied. For some period (since at least 2013) it appears that the disputed domain names have not been used in connection with an active website, or to actually offer the Complainant’s goods.
The conduct of the Respondent also indicates that the last of these tests has not been met. The Respondent has registered at least five domain names incorporating the Complainant’s mark. The Complainant also states that the Respondent registered other domain names incorporating its mark, not the subject of this dispute (although does not explain why these domain names are not also the subject of this dispute or provide direct evidence of these registrations). As relevantly noted in Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525:
“The mere fact that Respondents registered fourteen variations on Complainant’s name is telling; a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark. Cf. Nabisco Brands Co. v. Patron Gp., Inc., WIPO Case No. D2000-0032 (Panel may infer that it is highly unlikely that a registrant holding a large number of domain names could legitimately use each of them).” The number of domain name registrations held by the Respondent in this case is, as such, also indicative of a lack of rights or legitimate interests.
For these reasons, the Panel considers that the Respondent lacks rights and legitimate interests in the disputed domain names.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.
It is important to note that the requirement for registration and use is a conjunctive requirement. See, e.g., Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D2009-1413. As such, the Respondent’s bad faith intention is to be determined at both the time of registration and subsequent use. While the circumstances referenced above in paragraphs 4(b)(i)-(iii) refer only to registration, the chapeau to paragraph 4(b) makes it clear that such registrations can provide evidence of the Respondent’s intention at the time of registration and subsequent use. Similarly, in the opposite direction, paragraph 4(b)(iv) refers that a respondent’s subsequent “use” may be evidence, in appropriate circumstances, of both bad faith registration and use.
In relation to the disputed domain name <thymuskin.com>, a threshold complication is that the date of registration by the Respondent cannot be clearly ascertained from the evidence. By extension, it is also not possible to ascertain the time at which bad faith intention is to be considered. The evidence generally appears to concur that the name of the registrant, on its face, was changed in late 2013 to MVB & Associates Inc. But there is no evidence that such an entity exists in fact. As the Complainant argues, if MVB & Associates is not a real entity, it appears that the registrant-in-fact remained Theresa Wainright / Biotechne. Is the intention of these registrants to be determined at an earlier point, in the context of the earlier Agreement with the Complainant, or after July 2013 when the Complainant says that the distributorship arrangement was terminated?
On balance, and in the complex circumstances of this particular case, the Panel has considered the Respondent’s intention from the date the registration was changed to list MVB & Associates Inc as the registrant of <thymuskin.com>. That is, the Panel considers that it is appropriate to treat this change in registration details as a new registration, even though the underlying registrant appears to have remained the same. The Panel considers that this conclusion is consistent with the general principles outlined in the WIPO Overview 2.0, at paragraph 3.7 that:
“Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner's identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.” (emphasis added)
The Panel considers that the apparent change made by the Respondent to the registration details for <thymuskin.com> in late 2013 was done to frustrate the potential identification of the underlying registrant. As such, the Panel considers that this case is an exception to the general rule that formal changes in registration data are not deemed to constitute a new registration where there is an unbroken chain of ownership by an underlying entity.
The Panel has reached this conclusion notwithstanding that some of the evidence is suggestive (albeit ambiguously) that the domain name <thymuskin.com> was registered by the Respondent-in-fact “sometime after 2006” (in the words of the Complainant) in furtherance of the agreement between the parties for the Respondent to market the Complainant’s products in the United States. To find otherwise would be to ignore a deliberate change in the registration in late 2013. As discussed further below, the Panel has inferred that the Respondent made this change in a deliberate, if not very successful, attempt to obfuscate its real identity. The Panel does not consider it appropriate to make an alternative finding which would, in effect, ignore a step taken by the Respondent in apparent bad faith. Further, it is not possible for the Panel to identify an earlier date of registration to the Respondent-in-fact with any precision, in particular for the disputed domain names other than <thymuskin.com>. And even for the latter domain name, the evidence does not clearly establish the date of registration of that domain name to Theresa Wainwright / Biotechne. The Respondent has also had every opportunity to provide a Response to clarify these issues among others but has chosen not to. Considering the likely intention of the Respondent in late 2013, the Panel finds that the disputed domain name <thymuskin.com> has been registered and used in bad faith.
Even if the intention of the Respondent in 2006 were considered, and although it is a much closer issue, the Panel considers that the disputed domain name <thymuskin.com> was still registered in bad faith. There is no evidence of a clear agreement between the parties that the Respondent would register this domain name or that the Complainant was aware of the registration shortly after it was made. The other circumstances of bad faith also cast doubt on the genuineness of the Respondent’s intention at the time of registration. The Panel considers that these facts, on balance, would outweigh potential arguments that the Respondent had an implied license to register <thymuskin.com>, arising from the distribution agreement signed in 2002, or that the Complainant may have been earlier aware (and so acquiesced) to that registration. The Panel has not however considered this alternative in further detail, because of its findings above relating to the change of registration details in 2013.
There is further evidence of bad faith relating to the all of the disputed domain names outlined further below:
- The Complainant avers that the Respondent has demanded that the Complainant pay USD 130,000 for the Respondent to “relinquish al internet activity” relating to the disputed domain names and that, when the Complainant refused this offer, the Complainant says that the Respondent attempted to sell a package of domain names, including two of the domain names in dispute, to another of the Complainant’s distributors. Such conduct is suggestive of bad faith within the meaning of paragraph 4(b)(i) of the Policy.
- The Respondent has registered a number of domain names which incorporate the Complainant’s mark, including apparently additional domain names which are not included in this dispute. The Complainant refers to these registrations as constituting a “pattern of conduct” for the purpose of paragraph 4(b)(ii) of the Policy.
- At various dates in late 2013 and 2014, the disputed domain names, in particular <phytoskin.com>, hosted links to websites which advertised products which compete with those of the Complainant. This is suggestive of circumstances set out in paragraph 4(b)(iv) of the Policy.
- As noted above, the Respondent in 2013 has changed the registrant details to list MVB and Associates Inc. in the WhoIs details. There was no evidence that this is an entity in fact. The Panel has therefore inferred that this change was made for the purpose of avoiding proceedings against the underlying registrant. The disputed domain name <phytoskin.com> lists a privacy service as the registrant. In the overall circumstances of this case, the Panel has also inferred that the Respondent has also sought to use this service to frustrate proceedings against it.
Throughout, the Respondent was no doubt fully aware of the Complainant’s marks. The Respondent would have had this awareness based on the prior commercial relationship between the parties since 2002. The Respondent has deliberately registered domain names that are identical or confusingly similar to the Complainant’s marks and, at various points, hosted pay-per-click links offering products that compete with those of the Complainant. This overall pattern of conduct suggests that the Respondent has acted to unfairly exploit the value of the Complainant’s marks by registering the disputed domain names. The Respondent has also failed to respond to any of the allegations against it. From this, the Panel considers it reasonable to infer that this failure to respond means the Respondent does not have a good case in reply.
For these reasons, the Panel finds that the disputed domain names were registered and have been used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <phytoskin.com>, <thymrevit.com>, <thymuskin.com>, <thymu-skin.info>, and <thymuskinshampoo.com>, be transferred to the Complainant.
James A. Barker
Date: August 5, 2014