WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Galderma S.A. v. WhoisGuard / Jerwin Ordona

Case No. D2013-0363

1. The Parties

The Complainant is Galderma S.A. of Cham, Switzerland, represented by Lombard & Geliebter LLP, United States of America (“USA” or “United States”).

The Respondent is WhoisGuard of Los Angeles, California, USA / Jerwin Ordona of Baguio, Benguet, Philippines.

2. The Domain Name and Registrar

The disputed domain name <epiduo-gel.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2013. On February 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 28, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center also invited the Complainant to cure some deficiencies found in the Complaint. The Complainant filed a first amended Complaint on March 1, 2013 and a second amended Complaint on March 6, 2013.

The Center verified that the Complaint together with the amended Complaints 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 March 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2013.

The Center appointed Derek M. Minus as the sole panelist in this matter on April 9, 2013. 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 multi-national researcher, developer, manufacturer, wholesaler and retailer of pharmaceutical (prescription and non-prescription) and dermatological products. It is one of the largest dermatological companies in the world, owning 31 subsidiaries worldwide. In 2009, its annual sales exceeded USD 1.3 billion.

The Complainant launched its EPIDUO product, which is a form of anti-acne treatment frequently sold as “Epiduo Gel”, in the USA in December, 2009. It now sells the EPIDUO product worldwide, in some 34 countries. The product is marketed under the EPIDUO trademark which the Complainant first registered in the USA on September 15, 2009 (with a filing date of October 24, 2006) as Registration No. 3,683,503. The Complainant owns applications or registrations for its EPIDUO trademark in some 57 countries or jurisdictions around the world. In particular, the Complainant owns the Philippines Registration for EPIDUO No. 4-2008-004988 for pharmaceutical dermatological preparations for the treatment of acne in Class 5, issued on September 8, 2008 (with a filing date of April 28, 2008).

The disputed domain name was created on April 25, 2011, after the Complainant filed its trademark application for EPIDUO in the United States, after the Complainant launched its EPIDUO product in the United States, after the Complainant filed its Statement of Use in the United States, after the Complainant filed its trademark application for EPIDUO in the Philippines, after the Complainant obtained its trademark registration of EPIDUO in the Philippines and after the Complainant launched its EPIDUO product in the Philippines.

5. Parties’ Contentions

A. Complainant

According to the Complainant:

(i) The disputed domain name <epiduo-gel.com> is identical, substantially identical, substantially similar or confusingly similar to the Complainant’s trademark, EPIDUO, in which the Complainant has prior rights. The term “gel”, included in the disputed domain name, is not distinctive and does not serve to distinguish the disputed domain name from the Complainant’s trademark, as the disputed domain name fully incorporates the Complainant’s EPIDUO trademark. Previous panels have held that the mere incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark.

(ii) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent holds no trademark registrations for any EPIDUO mark and has never received a license, or any other form of authorisation or consent from the Complainant to make use of its EPIDUO mark. Although the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests in the disputed domain name, panels have consistently recognized the difficulty of proving a negative. As far as the Respondent being not “commonly known by the disputed domain name or the EPIDUO trademark”, because the disputed domain name is registered privately, the Respondent cannot claim that it is known by the disputed domain name. The Complainant submits that the Respondent (whether as an individual or a business organisation) has never been commonly known by the disputed domain name or the EPIDUO trademark.

(iii) Because of the Complainant’s prior trademark registrations in the US and the Philippines, the Respondent had constructive notice, if not actual notice, of the Complainant’s prior rights in the EPIDUO trademark.

(iv) The Respondent intentionally attempted, by using the disputed domain name, to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.

(v) The Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant and preventing the Complainant from reflecting its EPIDUO mark in the corresponding domain name. As the Respondent’s website actively directs consumers and potential consumers to products or services that compete directly with the Complainant’s EPIDUO product and includes no such links to the Complainant’s product, the Respondent’s continuing use of the disputed domain name has been in bad faith.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith by the Respondent.

The Respondent was given notice of this proceeding in accordance with the Rules but failed to file a Response to the Complaint and has not sought to answer the Complainant’s assertions, evidence or contentions in any way. The Respondent’s failure does not automatically result in a decision in favour of the Complainant. To succeed, the Complainant must still demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy, have been satisfied.

However, as the Respondent did not file a Response or otherwise reply to the Complainant’s contentions, the Panel shall decide the Complaint on the basis of the Complainant’s submissions and such inferences that can be reasonably drawn from the Respondent’s failure to submit a Response as the Panel considers appropriate (Rules, paragraph 14(b)).

A. Identical or Confusingly Similar

The Complainant has provided evidence that it is the registered owner of the EPIDUO trademark in at least 57 jurisdictions for pharmaceutical products, namely, dermatological anti-acne preparations, and specifically in the United States where the disputed domain name is registered and the Philippines where the Respondent Jerwin Ordona (apparently) resides.

According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2:

“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion.”

In this case, the disputed domain name consists of the EPIDUO mark together with a hyphen “-”, the word “gel” and the generic Top-Level Domain suffix “.com.” The gTLD “.com” is generally disregarded for the purpose of comparison, see Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.

It has been consistently held in numerous UDRP decisions that a domain name is generally considered as identical or confusingly similar to a complainant’s trademark “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”, see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

As the Complainant points out, the word “gel” is a generic, descriptive word similar to “buy,” “cheap,” “brand” and “pill” which have been found not to be sufficiently distinctive to prevent confusion with a complainant’s trademark. The addition of the word “gel” does not negate, but increase the confusing similarity with the EPIDUO trademark, see also Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363 (finding <dellaustralia.com> and other domain names incorporating DELL mark confusingly similar to DELL); Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 (finding <telstraaustralia.net> and other domain names incorporating TELSTRA mark confusingly similar to TELSTRA); Bayer AG, Bayer Schering Pharma AG v. ARanked/Donald Allen, ARanked/Duck Dawson, Martin V/Donald Allen, WIPO Case No. D2009-1682 (finding that the use of generic, descriptive words, such as “buy,” “pill,” and “brand,” does not preclude a finding of confusing similarity where the domain names incorporate the registered trademarks in their entirety).

Here the disputed domain name fully incorporates the Complainant’s trademark EPIDUO and the overall impression created by the combination of words used in the disputed domain name is that it is a reference to the Complainant’s EPIDUO trademark.

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, in which the Complainant has rights, and that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which the Respondent may demonstrate its rights or legitimate interests in the disputed domain name including the following:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.”

The Complainant submitted that the Respondent has never been an authorized distributor, wholesaler or retailer of any of the Complainant’s products, including its EPIDUO product. The Complainant is also unaware of any use or any demonstrable preparations to use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services by the Respondent. As the disputed domain name was only registered relatively recently on April 25, 2011, many years after the Complainant first registered its trademark of the EPIDUO mark, originally filed in the USA on October 24, 2006, the Respondent would not have acquired any trademark or service mark rights in the “epiduo-gel” name.

The Respondent (as an individual, business, or other organization) has never been commonly known by the disputed domain name or the EPIDUO trademark. The Respondent does not offer any product(s) or service(s) under the EPIDUO trademark that it produces or manufactures.

The Complainant has shown that the Respondent has no rights or legitimate interests in the disputed domain name. Given that the Complainant has satisfactorily made out a prima facie case, the burden shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name, see WIPO Overview 2.0 at paragraph 2.1:

“[C]omplainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”

Although the Respondent was given the opportunity, it has not provided a Response and and the Panel found no evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights or legitimate interests of the Respondent in the disputed domain name.

The Respondent has not provided any evidence that it is making use of the disputed domain name for a legitimate noncommercial purpose, without intent for commercial gain nor of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The evidence presented by the Complainant shows that since February 12, 2013, the website at “epiduo-gel.com” has provided links to several websites that offer products that compete directly with the Complainant’s EPIDUO product.

The Respondent is making use of the disputed domain name for a purpose that is antithetical to a bona fide offering of goods or services. Hence, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative, but are expressly non-exclusive, are:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Paragraph 4(a)(iii) of the Policy requires the Complainant to establish both that the Respondent has registered and uses the disputed domain name in bad faith. The consensus view among UDRP panels is that these requirements are conjunctive. Thus, a complainant must prove both bad faith registration and bad faith use in order to satisfy the requirements of paragraph 4(a)(iii) (see e.g. Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011). The Complainant bears the onus of proof in these matters.

The Complainant submitted that the Respondent has registered the disputed domain name in bad faith. This was evidenced by the Respondent furnishing false or inaccurate information to GoDaddy.com when it first registered the disputed domain name and the effort that the Respondent has made to conceal its identity. According to the Complainant, in March 2012 the disputed domain name was owned by the Respondent Jerwin Ordona and was registered with GoDaddy.com. At some time between March 2012 and November 2012, the registration was changed to a private registration with eNom, Inc. as the new registrar of record. The information provided by the Registrar eNom, Inc. confirms that Jerwin Ordona is the current registrant of the disputed domain name. But when the Complainant attempted to deliver a cease and desist letter to Jerwin Ordona’s registered address in the Philippines in May 2012, both the registered mail and courier packages were returned as undeliverable.

The Complainant argues that the Respondent’s use of the disputed domain name has also been in bad faith, in that the Respondent registered the disputed domain name <epiduo-gel.com> in order to prevent the Complainant from reflecting its mark in the disputed domain name. This is evidenced by the Respondent’s website from March 2012, advertising and selling the Complainant’s products without the Complainant’s authorization and then, one year after the date of registration the website being used to redirect consumers to products and information about products that compete with the Complainant’s EPIDUO product. The Respondent is therefore preventing the Complainant from using the disputed domain name to market its own product under its EPIDUO trademark.

The Panels further notes that by providing links to competing products, the Respondent’s use of the disputed domain name is for a commercial purpose and in bad faith. The Respondent’s use of the disputed domain name in directing consumers and potential consumers to products or services that compete directly with the Complainant’s EPIDUO product, indicates that the Respondent has intentionally attempted to attract Internet users to the website at which the disputed domain name resolves in order to obtain a commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of products offered for sale. The fact that the website at the disputed domain name has been subsequently deactivated does not preclude the Panel’s finding on bad faith registration and use by the Respondent.

The Panel therefore finds that paragraphs 4(b)(iv) of the Policy are made out and that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.

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 disputed domain name <epiduo-gel.com> be transferred to the Complainant.

Derek M. Minus
Sole Panelist
Date: April 23, 2013